Albert, Jason T. et al.Download PDFPatent Trials and Appeals BoardDec 10, 201915075383 - (D) (P.T.A.B. Dec. 10, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/075,383 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. Appeal 2019-001100 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 Appeal 2019-001100 Application 15/075,383 3 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 Appeal 2019-001100 Application 15/075,383 4 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 Appeal 2019-001100 Application 15/075,383 5 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 Appeal 2019-001100 Application 15/075,383 6 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. Appeal 2019-001100 Application 15/075,383 7 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- Appeal 2019-001100 Application 15/075,383 8 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 . . . Appeal 2019-001100 Application 15/075,383 9 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 Appeal 2019-001100 Application 15/075,383 10 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: Appeal 2019-001100 Application 15/075,383 11 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 Appeal 2019-001100 Application 15/075,383 12 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- Appeal 2019-001100 Application 15/075,383 13 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. Appeal 2019-001100 Application 15/075,383 14 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 Copy with citationCopy as parenthetical citation