IBM wins reversal of Alice rejections for targeted ad delivery at airports

Takeaway: Finding, under step two of the Alice analysis, the rejected claims to recite an advancement to the technology for delivering targeted advertising, the Patent Board reversed § 101 rejections of claims directed to delivery of targeting advertising in airports.

Note: This is the first of two posts covering the same PTAB decision.  For the other, see "Patent Board extends software per se, printed matter doctrines to reject computer-readable media (CRM) claims".

Details:

Ex parte Musial
Appeal No. 2017-001164; Application No. 13/396,177; Tech. Center 3600
Decided: Apr. 30, 2018

Inventors for IBM filed an application relating to "a computer implemented method, data processing
system, and computer program product for . . . distributing advertisements to receptive audiences", and more specifically captive audiences sitting in airport terminals waiting to board their flights, or aboard airplanes waiting to take off or deboard.  The Board reproduced rejected independent claim 14 as representative:

14.     A computer program product for selecting an advertisement, the computer program product comprising:
         a computer readable non-transitory medium having computer readable program code stored thereon, the computer readable program code comprising:
                  program instructions to receive a first check-in corresponding to at least one person, wherein the first check-in is a indication of presence relative to an airport gate servicing a flight and the first check-in is received from a kiosk;
                  program instructions to receive a second check-in to form an aggregation of people, wherein the second check-in is a indication of presence relative to the airport gate servicing the flight;
                  program instructions to characterize the aggregation based on cumulative characteristics selected of at least one vital statistic of each person checking-in to form an aggregated population characteristic;
                  program instructions to receive flight details concerning the flight, wherein the flight details comprise a flight destination, and the advertisement concerns a service provider at the flight destination;
                  program instructions to select at least one advertisement based on the aggregated population characteristic and the flight details, in response to the second check-in;
                  program instructions to receive a check-out of at least one person, wherein the check-out comprises reading an identifier of an at least one person who departs;
                  program instructions to select at least one advertisement based on the aggregated population characteristic;
                  program instructions to second characterize the aggregation based on the cumulative characteristics to form a second cumulative characteristic based on the aggregation without at least one vital statistic corresponding to the at least one person who departs, wherein the program instructions to select at least one advertisement based on the aggregated population characteristic perform to select the at least one advertisement is based on the second cumulative characteristic;
                  program instructions to select at least one advertisement based on the second cumulative characteristic, and a destination of the flight details, wherein the destination is stated within the at least one advertisement;
                  program instructions to dispatch the at least one advertisement; and
                  program instructions to detect presence of a service vehicle associated with a flight near and outside an aircraft associated with the flight, wherein the detecting presence relies on at least one global positioning satellite (GPS) signal received at the service vehicle and reported as location data to the hardware processor, wherein program instructions to dispatch comprises instructions to dispatch the at least one advertisement to the service vehicle for rendering and such dispatching is responsive to detecting presence of the service vehicle.

(Emphasis added.)  The Board summarized the claim as computer program products for distributing advertisements to an aggregation of people in an airport, using a service vehicle associated with a flight for which the people have checked-in, where such service vehicles can include fuel trucks, food and beverage delivery trucks, and baggage handling equipment.

The examiner rejected the claims under § 101 as being directed to ineligible subject matter, specifically, the abstract idea of "displaying advertisements based on an aggregation of people which falls into the category of . . . a method of organizing human activities, . . . [and] an idea of itself."  Under step two of the Alice analysis, the examiner found the claim to offer "no more than the recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry."

The applicants argued that by placing its display apparatus on a service vehicle like a fuel truck, and detecting the presence of the vehicle near an airplane to display the selected ad, the computer program product permits useful information to reach its users within the airplane, which was unique and inventive:

[A] number of heterogeneous links between disparate machines and people occur, in some cases, in an ad hoc basis, to form a network that allows communication that would be impossible or difficult otherwise.  In other words, a conventional approach would be to use extra machinery within the aircraft.  But because aircraft need to be maintained when such machinery breaks, and weight is a factor in aircraft fuel efficiency, the more complex computer program product and supporting devices are necessary.

In an advisory action, the examiner "disagree[d]" that the claims presented significantly more than an abstract idea: "[T]here appears to only be an electronic device that runs/performs/executes the abstract idea manipulation. . . . [The asserted] improvements described by Applicant are not actual improvements to the technology."  The applicants filed a pre-appeal request, relying solely on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), but were told to take it to the Board.

The examiner argued, on appeal, that the service vehicle amounted to a kiosk, and that "[t]he claimed kiosk and GPS are electronic devices that run/perform/execute the abstract idea manipulation.  These claimed devices perform the same functionality that they would normally perform and do not lend themselves to any type of unconventional processing."  Rejecting the idea that the claims improved any technology, the examiner found that the

claims seek to address a problem that existed and continues to exist outside of the realm of the technology associated with the additionally recited elements (targeted advertising).  The proposed solution is one that could have been implemented directly by a human performing analogous functions by hand and/or with the assistance of a general purpose computer applied to facilitate the functions at a high level of generality or with the assistance of additional elements performing well-known, conventional functions.

The appellants' reply brief complained that the examiner failed to explain

how dispatching an advertisement for rendering at a service vehicle would be conventional given that passengers/users who have checked-in/checked-out are not even on or in that service vehicle.  A fair characterization would be that to render such advertisements (or even the mere dispatching of advertisements) to such a vehicle runs counter to the notion that passenger/users should be entertained/informed within the aircraft.  Rather, such an approach, as described in the claim limitations, is odd, counter-intuitive and unconventional. . . . [An] unconventional feature is the feature of bringing destination related information to the eyes of network-stranded occupants of an aircraft—which is unheard of—given the frequent admonitions of flight crews to turn all connected devices to a disconnected state. . . . Certainly, it is unconventional to dispatch and/or render material for an audience on a vehicle that the audience does not even occupy. Accordingly, again, the Office again fails to consider the synergy of the claim combination, and incorrectly states that the ordered combination adds nothing.

Citing to the holding in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349-50 (Fed. Cir. 2016), that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces," the Board found that, contrary to the examiner's allegations, "[t]he ordered combination of Appellants' steps thus recites an advancement to the technology for delivering targeted advertising."  Reversing the examiner, the Board found:

[T]he ordered combination of steps in claims 14 and 21 is directed to a specific technological solution to a specific problem pertaining to targeted advertising, namely the problem of assessing receptiveness to various advertisements and then advertising to changing captive audiences in airport areas where network access may be limited or constrained. . . . Therefore, claims 14 and 21 include "additional features" that ensure the claims are "more than a drafting effort designed to monopolize [an abstract idea]." Alice, 134 S. Ct. at 2357.

My two cents: 

As noted in the Board's decision, targeted advertising claims have repeatedly been found to amount to unpatentable abstract ideas.  Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015); Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016); ); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir. 2014); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007 (C.D. Cal. 2014), aff'd, 622 F. App'x 915 (Fed. Cir. 2015); OpenTV, Inc. v. Netflix Inc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014).

But there's a lot going on in the claims at issue, and the examiner's analysis was little more than conclusory.  The examiner failed to contradict that the claims involved a number of interactive elements that inventively combined to produce what the applicants referred to as a "creepy" effect of seeing an evidently targeted ad on a vehicle out an airplane window.  As such, the Board was able to find that the claims amounted to "something more" than an attempt at monopolizing "displaying advertisements based on an aggregation of people", which was the abstract idea to which the examiner found the claims to be directed.  The examiner declined to consider that targeted advertising was a technology that could be improved and was, in fact, improved by the claims.

Although the examiner's analysis was deficient, it was all too typical of rejections made under Alice.  The extent of the analysis in many rejections is still limited to whether claims include non-computing elements "[o]nce the abstract idea is removed", as went the examiner's reasoning in the advisory action.  Even when such elements are present, examiners typically dismiss them as "insignificant extrasolution activity", making it difficult to draft and defend even inventive claims without having to go to the Board.

So, the Board got it right in reversing the Alice rejections, if for no other reason than that the examiner failed to set forth a prima facie case of ineligibility under the Alice framework.  But right about here is where the decision in this case takes a left turn into the Twilight Zone, in a twist so surprising that it's worth devoting a whole other blog post to analyzing: although the claims clear Alice, they're still ineligible under § 101 as software per se and printed matter!  (No way!  Yes, way!  No, actually, no way.)

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.

PTAB finds claims directed to tissue volume movement monitoring not ineligible as law of nature, abstract idea

Takeaway: The applicants appealed subject-matter eligibility rejections made under 35 U.S.C. § 101, alleging that the tissue volume monitoring claims were directed to a law of nature and an abstract idea.  Persuaded by the appellants' improvement arguments, the PTAB reversed the rejections, holding that "while using generic and known tracking modalities (such as ultrasound and MRI), [the claimed invention] improves the internal tissue monitoring by using the slower rate modality to adjust parameters of the physical model to predict target volume location, which, in turn, is used to determine a tracking error for deciding when to turn off treatment."

Details:

Ex parte Vortman
Appeal No. 2017-003076; Application No. 13/226,060; Tech. Center 3700
Decided:  Feb. 16, 2018

The application on appeal described methods and systems for continuously monitoring movement of an internal volume of tissue during treatment.  A representative claim on appeal read:

1.     A method of continuously monitoring movement of an internal volume of tissue during treatment thereof, the method comprising the steps of:
        using a physical model of anticipated movement of an internal target volume to predict a target volume location as a function of time;
        continuously and directly tracking the internal target volume during treatment thereof using two tracking modalities, wherein
                the first tracking modality provides initial estimated target volume locations based directly on first image contents of the internal target volume obtained at a first information update rate, and
                the second tracking modality identifies subsequent estimated target locations of the internal target volume based directly on second image contents of the internal target volume obtained at a second information update rate lower than the first information update rate wherein the subsequent estimated target locations are more accurate than the initial estimated target volume locations;
        comparing the initial estimated target locations to the predicted target volume locations to determine a tracking error;
        if the tracking error exceeds a safety threshold, suspending treatment; and
        adjusting one or more parameters of the physical model based on the subsequent estimated target locations of the target volume.

(Emphasis added.)

The examiner found the claims to be directed to a law of nature because they contained "nothing more than 'well-understood, routine, conventional activity previously engaged in by researchers in the field."'  The examiner further found the claims to be directed to an abstract idea because "there is no clear transformation of the determination and/or image data," no machine was required to obtain the physical model recited in the claims, and all the steps could be "derived by mind or by hand with writing utensil and writing surface."

In the appeal brief, the appellants argued that the claims' "approach clearly does not occur in nature and has markedly different characteristics compared to any natural phenomenon. Indeed, the subject matter of claim 1 is not even remotely relevant to the concepts that courts have found to be laws of nature (such as an isolated DNA, a correlation that is the consequence of how a certain compound is metabolized by the body, electromagnetism to transmit signals, and the chemical principle underlying the union between fatty elements and water)."  The appellants asserted that the examiner had skipped to the second step of the Alice/Mayo framework without properly analyzing the claims under the first step, i.e., the examiner's attempt to characterize the claims as directed to a law of nature was improper in the first place.

As to the allegation that the claims were directed to an abstract idea, the appellants argued:

[N]o case has held, and the Office's guidelines do not state, that a transformation of image data is necessary for patent eligibility under § 101. Rather, to determine whether the claim contains a judicial exception, the Office's guidelines identify several categories of subject matter that represent "abstract ideas" within the scope of binding judicial precedent: fundamental economic practices, certain methods of organizing human activity, an idea "of itself," and mathematical relationships/formulas. Claim I of the present application recites a method of treatment involving target tracking, i.e., continuously monitoring movement of an internal volume of tissue during treatment using two tracking modalities; this hardly qualifies as an "abstract idea" that is merely being applied. It can hardly be characterized as a fundamental economic practice, a method of organizing human activity, an idea "of itself," or a mathematical relationships/formula, nor can it even be analogized to such concepts. . . . [W]hether or not image data is "transformed" in some way is not germane to the patentability of claim 1, because the claim is not limited to mere acquisition of image data, nor does it recite merely recognizing data within collected data sets or a mental process that "can be performed in the human mind, or by a human using a pen and paper."

The appellants further argued that the recitations of suspension of therapy if necessary and updating the basis on which target tracking occurs amounted to a transformation of the image data.  Finally, noting the criticality of "determin[ing] whether the target volume location during treatment significantly deviates from the predicted target location," appellants threw in a brief improvement argument: "this advantageously allows the treatment to be suspended before the healthy, non-target tissue is damaged. Accordingly, claim 1 provides safety improvements in treatment and contains real-world application" (emphasis added).

In the examiner's answer brief, the examiner argued again that the claims amounted to "nothing more than routine data collection and/or insignificant extra-solution activity."  The examiner alleged that "the abstract idea is a critical aspect of the claimed invention."  The examiner also addressed the improvement argument by arguing that it amounted to mere attorney argument and was not supported by evidence such as experimental data.

By the time of the reply brief, the CAFC had favorably decided the pure-software, "self-referential table" case of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).  The appellants were thus prompted to expand somewhat on their improvement argument, the germ of which had been included in their appeal brief:

[In Enfish,] the Court of Appeals for the Federal Circuit determined that a claimed invention qualified as patentable subject matter under step 1 of the Alice framework because the claims focused on an improvement to computer functionality.  Here, the claims focus on an improvement to medical imaging and require operations on image contents based on tracking modalities. If anything, the present claims recite specialized equipment with even greater specificity than in Enfish.

The appellants also challenged the examiner's assertion that experimental evidence was required to demonstrate that the claims were directed to an improvement:

Characterizing the claimed invention as an improvement for § 101 purposes requires no evidence because the proposition is, in fact, self-evident: paragraph [0006] of the specification explains the challenge encountered during tissue treatment; paragraph [0007] describes the drawbacks of conventional approaches; and paragraph [0009] sets forth an approach utilized in the present application to overcome the treatment challenge while avoiding the drawbacks of conventional approaches. . . . [T]o the extent evidence is needed, it is supplied by the present specification.

After finding that the claims amounted to "significantly more" under the second step of the Alice/Mayo framework, the Board further found the improvement argument to be sufficient to overcome the allegation of subject-matter ineligibility:

The holding in [Enfish] also supports the patent eligibility of the claims. . . . In this case, the claims improve the way the tracking modalities operate in determining the movement of tissue volume to determine when to suspend treatment.  Thus, the claimed subject matter is not merely an algorithm or natural phenomenon, but constitutes an improvement to how tracking systems operate, such as ultrasound and MRI, that improves their ability to monitor tissue movement during treatment.  Thus, unlike the claims in In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610 (Fed. Cir. 2016), the claims include a sufficient inventive concept to satisfy § 101.

(Emphasis added.)

My two cents:

I don't want to say the Board got the outcome wrong.  It is my sense that the claims are not directed to an abstract idea under the framework established by the Supreme Court, as elaborated and expounded upon by the Federal Circuit.  But, I think, even if the Board arrived at the right answer, some of their reasoning gets it very wrong indeed.

In my last post, I highlighted the growing importance of improvement arguments, and provided a series of practice tips for successfully rebutting judicial-exception subject-matter eligibility rejections with improvement arguments.  In this and the next few posts, I'll look at recent PTAB decisions in which improvement arguments helped win reversals of Alice rejections.

It's worth noting that the application was filed on an 8-page specification without drawings.  There is no minimum specification length and no statutory requirement for a drawing so long as none are "necessary for the understanding of the subject matter sought to be patented."  35 U.S.C. § 113.  (It's an interesting question whether the absence of any drawing renders an application immune to the annoyance of objections lodged under Rule 83 ("[t]he drawing in a nonprovisional application must show every feature of the invention specified in the claims").  However, I note that 35 U.S.C. § 113 and Rule 81(c) appear to authorize the examiner to demand a drawing whenever the "subject matter admits of illustration.")  But a thin description may lead to trouble in prosecution, inasmuch as it can give the practitioner very little to lean on when the going gets tough.  In my last post, I discussed the desirability, when making improvement arguments, of underscoring with sufficient explanation the real-world benefits of the improvement (practice tip #5), providing evidence to support the improvement (practice tip #7), and carefully identifying the previous state of the technology field (practice tip #8).  Evidently, the specification was ample enough in this case to provide the needed explanations and evidence.  But if any of the information necessary to make the improvement argument had been culled from the spec in the drafting phase, it could have complicated matters for the prosecuting practitioners, who might have been challenged to provide documentary or testimonial evidence to support their arguments.

But there's a bigger problem here, one that was not addressed by any party or the Board on appeal.  The conditional clause near the end of claim 1, directing the suspending of treatment "if the tracking error exceeds a safety threshold," is properly afforded no patentable weight when considering the patentability of the claim, either under an eligibility rejection or an art-based one.  See MPEP § 2103(I)(C), 4th paragraph, 4th sentence: "Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation."  See also Ex parte Schulhauser, No. 2013-007847 (P.T.A.B. Apr. 26, 2016) (affirming obviousness rejections where a broadest reasonable reading of the claim excised method steps that only needed to be performed if certain conditions precedent are met, and holding that "[a] proper interpretation of claim language, under the broadest reasonable interpretation of a claim during prosecution, must construe the claim language in a way that at least encompasses the broadest interpretation of the claim language for purposes of infringement."); In re Johnston, 435 F.3d 1381 (Fed. Cir. 2006) (optional elements do not narrow claims as they can be omitted).

In the last post, I discussed the importance of the scope of the improvement argument matching the scope of the claim (practice tip #6).  Here, because the claim reads as much on a method that does not suspend treatment as one that does, and because the improvement argument leans heavily on the functionality of this clause that might as well be stricken from the claim (see, e.g., the boldfaced portions of the appellant argument and the decision on appeal, quoted above), there is a potentially crippling scope mismatch between what is actually claimed and what it is argued that is claimed.  Consequently, the applicability of the improvement argument might have been more limited than the examiner, appellants, and Board realized.

It is not clear whether, absent an effective improvement argument, the Board would have given the appellants the win based on their Alice step 2 arguments ("[W]e agree with Appellants that the claim as a whole is significantly more than the ineligible concepts.").  This is because the Board's step 2 analysis seems to rely on the appellants' improvement arguments: "We are persuaded that the claimed
method . . . improves the internal tissue monitoring" (emphasis in original).  As the Federal Circuit has held in various cases, improvement arguments are applicable at either step of the framework.

So, although an improvement argument won this case, perhaps it shouldn't have, at least not as argued and decided, and the Board likely erred in not realizing that a conditional limitation is no limitation.  Possibly, the appellants could have avoided this issue with more artful drafting; "based on the tracking error exceeding a safety threshold, suspending treatment" gets the job done without the complication of patentably weightless conditional claiming language.

PTAB decisions involving computer vs. user distinctions

I reviewed quite a few 2015 ex parte appeal decisions in which the distinction made by the Applicant related to actions performed by a computer rather than a user. I'll discuss a few of these in today's post, with more to follow in a future post.

In Ex parte Furlong (Appl. No. 10/769,117, PTAB 2015), the Board found that "automatically" in a computer claim covered user input that led eventually to computer action. The Furlong application was directed to software for generating expense reports. The user tracked daily activities and tasks using the software, and the software associated these daily activities and tasks with expenses, then generated an expense report. One of the limitations at issue on appeal read: "in response to the identification of the activity item being expensable, automatically associating, by the processor, at least one expense item with the activity item." The Applicant argued that in the reference, the user does the association, not the computer:

Vance's new trip is not (and will not be) associated with a car rental until Vance's user associates the new trip with the car rental. Since Vance's act of associating is not automatic, Vance's act of associating fails to teach the claimed act of automatically associating at least one expense item with the activity item. 

The Board found that "automatically associating" was broader than the Applicant's reading:

No implementation for such automation is recited or narrowed, and no degree of automation is recited either. Thus, even were Vance to do no more than automatically record an association after a user matched an expense item with an activity item, this creation of an association by the computer following the user’s input would be within the scope of the claim.

Similarly, in Ex parte Ren (Appl. No. 12/582,142, PTAB 2015) the Board found that a particular claim limitation covered computer input originating from a user. The application was directed to a vehicle navigation system. One of the claims on appeal ("a method of displaying a navigation map") involved rendering a nonphotorealistic image based on three-dimensional data associated with buildings surrounding the vehicle. The limitation argued on appeal was "modifying a viewing angle of the nonphotorealistic image based on feedback from the user." The Applicant argued that in the reference, the viewing angle was modified based on feedback from the system/vehicle, rather than user feedback as claimed. The Board was not persuaded, and adopted the Examiner's finding that "because a user operates the system/vehicle, Herbst’s feedback is based on the user."

In Ex parte Blythe (Appl. No. 11/965,946, PTAB 2015), the Board found that the claim language did not exclude human action. The claims were directed to detecting unauthorized changes to ATMs by comparing the ATM's electromagnetic "fingerprint" to a stored reference fingerprint. The Applicant appealed a § 103 rejection and argued the limitation "receiving, with the detection device, an electromagnetic profile emitted from the financial terminal, said received electromagnetic profile including radio wave activity if present." The Examiner relied on Yuzik ("Surveillance of Suspects of ATM Fraud") for this, pointing to an "RF listening device" in the surveillance system that "listened for suspicious RF signals transmitted from the vicinity of the ATM to a nearby receiver operated by a suspect." The Applicant argued that a combination using Yuzik's RF listening device required a person to actually hear radio activity, which was "a different approach from that provided by the subject invention." In the appeal Decision, the Board noted that "nothing in the claim excludes a person from actually hearing radio activity for detecting as well."

Similarly, in Ex parte Schimpf (Appl. No. 12/647,965, PTAB 2015), the Board found that the claims did not exclude manual entry of database fields. The application was directed to a system that dynamically constructed a new database query, allowing the user to directly specify which field contents in the current record were important. The Applicant argued the reference required a user to "manually enter desired values into fields when generating a search query." In contrast, the Applicant argued that the claims required the search query to be populated from database record field values. The Board disagreed and said the Applicant's manual field entry vs. computer populated distinction wasn't present in the claim:

Those claims recite a database record contains field values (“fields in said currently active database record contain values retrieved from said database”) and a search query uses field values (“a search query requesting all records having values in said at least one user selected field”), but the claims do not recite, and therefore do not require, using database record field values as search query field values. Moreover, the claims do not restrict the source of search query field values or the manner by which search query field values are obtained.

Ex parte Granda (Appl. No. 12/651439, PTAB 2015) is an instance where the Board found that the claims did not require a particular method step to be performed by a computer. The application was directed to a resolving cell phone connectivity problems "while avoiding audible ringing and or inadvertent user pick-up during error diagnosis and correction." The claimed method on appeal involved: receiving an error message at an autonomous probe in response to a data call placed by the probe; mapping the error message to an array of corrective actions. The method also included "executing at least one corrective action from the array of corrective actions." In arguing this limitations on appeal of an obviousness rejection, the Applicant asserted that the feature relied on by the Examiner was carried out by a user:

Shabalin merely discloses directing users to articles containing instructions that a user may follow in order to resolve an application error and fails to describe executing at least one correction action as recited by Appellants’ claim 1.

In construing the claim, the Board found that the Applicant had read too narrowly:

[C]laim 1 does not require that the executing at least one corrective action be performed by any particular unit, but merely recites executing at least one corrective action from the array of corrective actions (see claim 1). Thus, We find that Appellants’ contention that Shabalin"s executing is carried out by the user, (i.e., suggesting that it must be performed by the autonomous probe) is not commensurate with the scope of the claims.

Finally, Ex parte Rys (Appl. No. 12/111,877, PTAB 2015) is an example where the Board found that the claim language allowed for intermediate steps performed by a user. The application described techniques for renaming multiple files. The limitation at issue on appeal in the "computer-implemented method" read: "on detecting that the name is changed, automatically placing a next file in the specified collection in the rename state; [and] displaying a computer-generated name for the next file, the computer generated name based on the changed name of the single file." The Examiner mapped this claim limitation to the "Rename and Copy function with a serialization option" described in Kaplan. Kaplan's software presented the user with a series of dialog boxes, where the user provides and initial destination filename. The filename was then automatically incremented as additional files are copied, but for each filename the user was required to take action to either accept or change the filename. One of the distinctions made on appeal by the Applicant was this user interaction with Kaplan's dialog box. The Board was not persuaded.

With regard to those additional features which Appellant argues are explicitly required, we note Appellant’s claim utilizes the transitional word “comprising.” We therefore find that the possible inclusion of certain windows or dialog boxes within the process described by Kaplan does not preclude the Examiner’s reliance on Kaplan’s description of an automated serialized renaming process.
(Emphasis added.)