Albert, Jason T. et al.

Patent Trials and Appeals Board

Dec 10, 2019

15075383 - (D) (P.T.A.B. Dec. 10, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/075,383 03/21/2016 Jason T. Albert ROC920150393US2 1059
136032 7590 12/10/2019
Rolnik & Associates, P.C.
24 N. Main Street
Kingwood, TX 77339
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
12/10/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON T. ALBERT, CHRISTOPHER J. ENGEL,
KAHN C. EVANS, STEVEN B. JANSSEN, MATT K. LIGHT,
DAVID R. NICKEL, KARL M. SOLIE, and MICHAEL L. TRANTOW
Appeal 2019-001100
Application 15/075,383
Technology Center 2600
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
JOHN F. HORVATH, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–7. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corp. Appeal Br. 2.
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Application 15/075,383
2
CLAIMED SUBJECT MATTER
The claimed invention is directed to a “computer program product for
consolidating social network postings and more specifically to gathering
questions that are phrased differently, but concerning the same subject
matter, to a common thread.” Spec. ¶ 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer implemented method for preventing
duplicate posts within a question and answer (Q and A) server,
the method comprising:
receiving a user question via a network from a user
accessing the Q and A server;
applying natural language processing to the user question
to form a user question vector;
applying natural language processing to each question in
a question and answer (Q and A) corpus to form a plurality of
corpus question vectors, wherein each question is in a row
having at least the each question;
comparing the user question vector to each of the
plurality of corpus question vectors to determine a closest
match between the user question vector and the corpus question
vectors to obtain an identified question and answer (Q and A)
row;
determining if the identified Q and A row has a last
answer that has a corresponding confidence to the question of
the identified Q and A row that exceeds a confidence threshold
and in response, determining if the user question has a higher
similarity to a question in the identified Q and A row as
compared to a question similarity threshold,
and if so, determining that at least one pairing of the last
answer to another answer in the identified Q and A row has a
similarity exceeding a last threshold, and in response, blocking
the submission of the user question as a distinct question and
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directing the user to at least one answer of the identified Q and
A row;
and if not, posting the user question as an unanswered
question, and further in response, posting the question and
further responding to at least one request for the question by
rendering the question over the network directed to a user-
accessed client computer.
REJECTIONS
Claims 1–7 stand rejected under 35 U.S.C. § 101 as directed to
unpatentable subject matter. Final Act. 5–6.
Claims 1–7 stand provisionally rejected on the grounds of non-
statutory double patenting as unpatentable over claims 14–20 of U.S.
Application No. 15/004,098. Id. at 6–11.2
OPINION
Adoption of Examiner’s findings and conclusions
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
contentions, and adopt as our own the findings and reasons set forth by the
Examiner in the Final Action and the Examiner’s Answer in response to
Appellant’s Appeal Brief. We highlight the following for emphasis.
Examiner’s provisional double patenting rejection
Appellant does not contest the Examiner’s provisional double
patenting rejection. See Appeal Br. 1–15. Accordingly, we summarily
sustain the rejection. See 37 C.F.R. § 41.37(c)(iv).

2
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Examiner’s rejection under 35 U.S.C. § 101 and Appellant’s arguments
The Examiner determines claims 1–7 are directed to one or more
abstract ideas, including certain mental processes, methods of organizing
human activity, and mathematical concepts. See id. at 5 (finding the claims
directed to “[o]rganizing and manipulating information through
mathematical correlations,” “[c]omparing new and stored information and
using rules to identify options,” “manipulating textual information using
calculated similarity values/mathematical correlations,” and calculating
results that are “achievable by a human with a pen and paper”) (emphases
added); see also Ans. 11 (finding the claims directed to “collecting new
information and using rules to identify options” and “organizing and
manipulating information through mathematical correlations” (emphases
added)).
The Examiner further finds “[t]he additional elements or combination
of elements in the claims . . . amount to no more than mere instructions to
implement the [abstract] idea on a computer.” Id. at 5–6; see also Ans. 11–
12 (finding the claims tie or link a generic computer to the abstract idea of
“receiving and sending information over a network”). Therefore, the
Examiner finds the “additional elements do not provide meaningful
limitations to transform the abstract idea into a patent eligible application.”
Final Act. 6; see also Ans. 12.
Appellant argues the Examiner errs by mischaracterizing the claims as
directed to an abstract idea rather than to “operations integral to improving
computer network function[s]” such as “reducing network bandwidth by
more efficiently rendering questions over [a] network.” Appeal Br. 8. Thus,
Appellant argues, the claims are directed to patentable subject matter
because they “solve[] a tangible non-abstract problem.” Id. at 9. Appellant
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further argues the claims are directed to patentable subject matter because
they “support improved computer function” by allowing a network server to
“fold[] plural version of the same question together,” thereby “increas[ing]
the concentration of good answers to a single point or rendered page.” Id. at
10–11.
The Examiner disagrees with Appellant’s characterization of the
claimed invention, finding the Specification fails to disclose that “redundant
questions pose a network latency/delay or network bandwidth issue,” and
“do[es] not describe ‘reducing network bandwidth by more efficiently
rendering questions over the network.’” Ans. 9–10. The Examiner further
finds that the claims “do[] not improve the functionality of [a] generic
computer,” because the computer “merely adds [questions] to a
collection/index of text that is subsequently retrieved when searched.” Id. at
13–14.
We agree with the Examiner that claims 1–7 are not directed to
patentable subject matter.
Principles of law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). In determining whether a claim falls within a judicially excluded
category, we are guided by the Supreme Court's two-step framework
described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance
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with that framework, we first determine what concept the claim is “directed
to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If a claim is “directed to” an abstract idea, we turn to the second step
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent eligible application.”
Alice, 573 U.S. at 221 (internal citation omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
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The PTO has published guidance on the application of § 101 to
patentability determinations. See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 PEG Memo”).
Under that guidance, we first determine whether the claim recites:
(1) Step 1: a statutory class (i.e., a process, machine,
manufacture, or composition of matter). If the claim does
not recite a statutory class, it is not patent eligible.
Otherwise, we determine whether the claim recites:
(2) Step 2A – Prong One: any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical
concepts, certain methods of organizing human activity,
such as a fundamental economic practice, or mental
processes). If the claim does not recite a judicial exception,
it is patent eligible. Otherwise, we determine whether the
claim recites:
(3) Step 2A – Prong Two: additional elements that integrate
the judicial exception into a practical application (see
Manual of Patent Examining Procedure (MPEP)
§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08-2017 (Jan.
2018)). If the claim integrates a judicial exception into a
practical application, it is patent eligible. Otherwise, we
determine whether the claim recites:
(4) Step 2B: additional elements beyond the judicial exception
that are more than “well-understood, routine,
conventional” elements in the field (see MPEP
§ 2106.05(d)). If the claim adds more than well-
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understood, routine, and convention additional elements, it
is patent eligible. Otherwise, it is not patent eligible.
2019 PEG Memo.
2019 PEG Memo step 2A, prong one
In the instant case, although claim 1 is directed to a statutory class
under step 1 (i.e., a computer-implemented method) most of the limitations
recited in claim 1 are directed to judicially recognized abstract ideas under
step 2A, prong one. For example, claim 1 recites:
applying natural language processing to [a] user question
to form a user question vector;
applying natural language processing to each question in
a question and answer (Q and A) corpus to form a plurality of
corpus question vectors, wherein each question is in a row
having at least the each question;
comparing the user question vector to each of the
plurality of corpus question vectors to determine a closest
match between the user question vector and the corpus question
vectors to obtain an identified question and answer (Q and A)
row;
determining if the identified Q and A row has a last
answer that has a corresponding confidence to the question of
the identified Q and A row that exceeds a confidence threshold
and in response,
determining if the user question has a higher similarity to
a question in the identified Q and A row as compared to a
question similarity threshold, and if so,
determining that at least one pairing of the last answer to
another answer in the identified Q and A row has a similarity
exceeding a last threshold . . .
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These limitations, as described below, fall under the judicially excepted
abstract ideas of “mathematical concepts” and “mental processes.” See 2019
PEG Memo § 1.
Applying natural language processing to a user question and to a
corpus of questions to form question vectors is a mathematical concept
(forming vectors) that can be performed in a person’s mind, and therefore is
both a mathematical concept and a mental process. Id.; see also Spec. ¶ 30
(disclosing forming a question vector by reducing the question “to a list of
root words, possibly subtracting any overly common words”). Comparing
the user question vector to the corpus of question vectors to identify a closest
matching corpus question, and determining whether the similarity between
the user question and the closest matching corpus question is higher than a
similarity threshold are mathematical calculations that can be performed in a
user’s mind, and therefore are both mathematical concepts and mental
processes. See 2019 PEG Memo § 1; see also Spec ¶ 31 (disclosing that
comparing question vectors results in a number that can be compared to a
similarity threshold representing the number of root words the question
vectors have in common). Finally, determining whether the last answer to
the closest matching corpus question has a confidence exceeding a
confidence threshold and a similarity to another answer that exceeds a last
threshold are mathematical calculations that can be performed in a user’s
mind, and therefore qualify as both mathematical concepts and mental
processes. See 2019 PEG Memo § 1; see also Spec ¶ 32 (disclosing
“perform[ing] analysis between answers to a question in a similar manner as
the analysis of similarity between questions”).
Because claim 1 recites a computer implemented method that is
largely comprised of forming mathematical concepts and performing
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mathematical calculations that can be performed in the human mind, claim 1
recites an abstract idea in the form of either mathematical concepts
(mathematical relationships) or mental processes (observation, evaluation,
judgment, opinion).
2019 PEG Memo step 2A, prong two
Because claim 1 recites a patent-ineligible abstract idea, we consider
whether the claims integrate these judicially recognized exceptions into a
practical application under step 2A, prong 2, of the eligibility guidance. See
2019 PEG Memo § III.A.2. This involves (a) identifying whether the claim
recites elements in addition to the judicial exceptions, and (b) determining
whether these additional elements integrate the judicial exceptions into a
practical application. Id.
Additional elements integrate judicial exceptions into a practical
application when they (i) improve the functioning of a computer or some
other technology, (ii) effect a particular treatment or prophylaxis for a
disease or medical condition, (iii) implement or use the judicial exceptions
in conjunction with particular machines or manufactures that are integral to
the claim, (iv) transform or reduce a particular article to a different state or
thing, or (v) do more than merely link the judicial exceptions to a particular
technological environment. Id. Additional elements do not integrate judicial
exceptions into a practical application when they (i) merely include
instructions to implement the judicial exceptions on a computer, (ii) add
insignificant pre- or post-solution activity, or (iii) do no more than link the
judicial exceptions to a particular technological environment. Id.
The additional elements in claim 1 that are not judicially recognized
abstract ideas are:
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Application 15/075,383
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receiving a user question via a network from a user
accessing the Q and A server;
blocking the submission of the user question as a distinct
question and directing the user to at least one answer of the
identified Q and A row;
posting the user question as an unanswered question; and
responding to at least one request for the question by
rendering the question over the network directed to a user-
accessed client computer.
These elements do not integrate the judicial exceptions described above into
a patent-eligible practical application. For example, receiving a user question
from a server over a network is no more than insignificant pre-solution
activity. Id. Blocking or posting the user question, and responding to a
request for a posted user question by rendering it over a network to a client
computer, represents nothing more than insignificant post-solution activity.
Id.
These insignificant pre- and post-solution steps—even when
performed over a computer network via communications between client and
server computers—are insufficient to integrate the judicially excepted steps
into a practical application. See Alice, 573 U.S. at 224 (“use of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept). In this regard, we find
unpersuasive Appellant’s contention that the claimed invention “reduc[es]
network bandwidth by more efficiently rendering questions over the
network” or “improve[s] computer performance . . . . by folding plural
versions of the same question together.” Appeal Br. 9–10.
Although the claimed process does fold plural versions of the same
question together, the claimed process fails to improve the functioning of
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either the client computer, the server computer, or the computer network.
Rather, the client computer, server computer, and computer network merely
link the underlying abstract idea (i.e., the mathematical relationships or
mental processes) to a particular technological environment. That is, as
stated in the Specification, the claimed process simply “relieve[s] a
moderator or other users from flagging questions as duplicates as well as
reducing a dilution of answers being submitted redundantly to two separate
questions.” Spec. ¶ 52. Thus, the claimed process uses generic computers
and computer networks to automate tasks that would have otherwise been
performed by a human moderator. Such claims typically are insufficient to
integrate an abstract idea into a practical application. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible”).
For these reasons, we determine the additional recitations of claim 1
do not integrate the recited patent-ineligible subject matter into a practical
application.
2019 PEG Memo step 2B
Having determined that claim 1 does not integrate the limitations that
are judicial exceptions into a practical application, we consider whether the
additional limitations, both individually and as an ordered combination, are
more than well-understood, routine, or conventional elements under step 2B of
the eligibility guidance. See 2019 PEG Memo § III.B. We find they are not.
Although the additional limitations, both individually and as an
ordered combination, recite types of machines (e.g., client and server
computers and a computer network) for performing the pre- and post-
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solution activity steps of the invention (e.g., receiving user questions,
blocking or posting the questions, and responding to requests for posted
questions), the Specification describes these machines as generic
components on which the judicially excepted and pre- and post-solution
steps of the claim are performed. For example, the network is generically
described as “the Internet, a local area network, a wide area network, and/or
a wireless network.” Spec. ¶ 55. Similarly, the client and server computers
are generically described as having:
a processor of a general purpose computer, special purpose
computer, or other programmable data processing apparatus to
produce a machine, such that the instructions, which execute via
the processor of the computer or other programmable data
processing apparatus, create means for implementing the
functions/acts specified in the flowchart and/or block diagram
block or blocks.
Id. ¶ 58.
For these reasons, the additional elements of claim 1, considered both
individually and as an ordered combination, fail to “‘transform the nature of
the claim’ into a patent-eligible application.’” Alice, 573 U.S. at 217
(quoting Mayo, 566 U.S. at 78). Accordingly, we agree with the Examiner
that claim 1 is patent ineligible under 35 U.S.C. § 101. We, therefore, sustain
the Examiner’s rejection of claim 1. For the same reasons, we sustain the
Examiner’s rejection of claims 2–7, which depend from claim 1.
CONCLUSION
The Examiner’s rejection of claims 1–7 as directed to unpatentable
subject matter is sustained.
The Examiner’s rejection of claims 1–7 for obviousness-type double
patenting is sustained.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–7 101 Unpatentable
subject matter
1–7
1–7 Double patenting 1–7
Overall
Outcome
1–7

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED