Chetuparambil, Madhu K. et al.

Patent Trials and Appeals Board

Jun 16, 2020

13316950 - (D) (P.T.A.B. Jun. 16, 2020)

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.
13/316,950 12/12/2011 Madhu K. Chetuparambil IN920110206US1
(790.142)
2880
89885 7590 06/16/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
06/16/2020 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 MADHU K. CHETUPARAMBIL, KALAPRIYA KANNAN,
and GEORGE T. JACOB SUSHIL
________________

Appeal 2019-001694
Application 13/316,950
Technology Center 3600
____________

Before ERIC S. FRAHM, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 13‒19 and 22‒25, which are all the claims pending in this
application. Claims 1‒12, 20, and 21 are canceled. See Appeal Br. 30‒34.
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. Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 3.
Appeal 2019-001694
Application 13/316,950

2

STATEMENT OF THE CASE
Introduction
Appellant’s application relates to deriving a mercantile intelligence
report by reconciling social content data with inputted guidelines. Spec.
¶¶ 1‒2. Claim 13 is illustrative of the appealed subject matter and reads as
follows:
13. An apparatus comprising:
at least one processor; and
a computer readable storage medium having computer
readable program code embodied therewith and executable by
the at least one processor, the computer readable program code
comprising:
computer readable program code configured to
input guidelines for deriving mercantile intelligence with
relation to a product, wherein the guidelines comprise
requirements and expectations of a mercantile
intelligence report;
computer readable program code configured to
mine, from user posts on a social media network, social
content data with relation to the product, the social
content data comprising user-generated content related to
the product, wherein the mining comprises extracting
features from information related to the product and
deriving attributes related to the product from the social
content data and wherein the mining comprises
determining an importance of a product feature to a
group of users by identifying positive opinions in the
user-generated content and negative opinions in the user-
generated content, identifying a product feature found
within the identified positive opinions and identified
negative opinions, and extracting opinions associated
with that product feature;
computer readable program code configured to
generate a map which reconciles the social content data
Appeal 2019-001694
Application 13/316,950

3

with the guidelines, the social content data including
language-based terms expressed in social content,
wherein the generating a map comprises relating the
mined social content data with the guidelines;
computer readable program code configured to
extract from the map elements related to mercantile
intelligence, the elements comprising product-related
features to which the social content language-based terms
are mapped; and
computer readable program code configured to
output a mercantile intelligence report with relation to the
product, via determining a product utility value;
wherein to determine a product utility value comprises:
identifying a group opinion regarding the
product, wherein the group opinion is based upon
the positive opinions and negative opinions related
to the product and product features over a
predetermined time period;
determining a ranking of the importance of a
product feature by determining a weighted sum of
expected attribute utility values, wherein the
expected attribute utility values comprise a value
for each of the extracted features and each of the
derived attributes identifying an importance of
each of the extracted features and each of the
derived attributes as compared to other of the
extracted features and the derived attributes; and
determining an exponential component for
modeling a natural decay in a value of a product
during its lifetime.

The Examiner’s Rejection
Claims 13‒19 and 22‒25 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 5‒6.
Appeal 2019-001694
Application 13/316,950

4

Related Case
The present application is the parent application of a continuation
application, U.S. Application No. 13/598,987, which is also before this panel
on appeal (Appeal 2019-001717).
ANALYSIS
Principles of Law – Section 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
Appeal 2019-001694
Application 13/316,950

5

mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
Appeal 2019-001694
Application 13/316,950

6

ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (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.
Principles of Law – USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
Appeal 2019-001694
Application 13/316,950

7

2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See 2019 Revised Guidance. Claim 13 recites “[a]n
apparatus.” Appellant does not argue the Examiner erred in concluding
claim 13 falls within the four statutory categories of patentable subject
matter. We agree with the Examiner’s conclusion because claim 13 falls
within the machine or manufacture categories.

(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
Appeal 2019-001694
Application 13/316,950

8

Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). See 2019 Revised Guidance.
The Examiner concludes claim 13 is directed to the abstract idea of
generating a mercantile intelligence report relating to products mined from
social content data from user posts on a social media network. Final Act. 6.
The Examiner concludes this represents an idea of itself or mental process,
and a method of organizing human activity. See id.
Appellant argues the Examiner erred because the Examiner’s analysis
is nothing more than a conclusory statement based on an overgeneralization
of the claims that fails to consider specific limitations. See Appeal Br. 16.
Appellant argues the Examiner has, therefore, failed to establish a prima
facie case of unpatentability. See id. at 17. Appellant also argues the
Examiner failed to identify any abstract idea that corresponds to an abstract
idea identified by the courts. See id. at 18‒19.
Under the broadest reasonable interpretation, we agree with the
Examiner that claim 13 recites generating a mercantile intelligence report
relating to products mined from social content data from user posts on a
social media network.
In particular, claim 13 recites “[a]n apparatus comprising: at least one
processor; and a computer readable storage medium having computer
readable program code embodied therewith and executable by the at least
one processor.” The computer readable program code is configured to
Appeal 2019-001694
Application 13/316,950

9

perform a series of steps, which include data gathering, analysis of the
gathered data, and output of the result of the analysis. For example, the
limitations “input guidelines for deriving mercantile intelligence with
relation to a product;” and “mine, from user posts on a social media network,
social content data with relation to the product” characterize data gathering.
The Federal Circuit has held that data gathering steps “cannot make an
otherwise nonstatutory claim statutory.” CyberSource, 654 F.3d at 1370
(quoting Grams, 888 F.2d at 840). The Federal Circuit has also held that
(1) presenting offers to potential customers and (2) gathering statistics
concerning customer responses were “conventional data-gathering activities
that d[id] not make the claims patent eligible.” OIP Techs., 788 F.3d
at 1363–64. Consistent with those decisions, the MPEP identifies “gathering
data” as an example of insignificant pre-solution activity. MPEP
§ 2106.05(g).
Claim 13 also recites steps related to evaluation and judgment of the
gathered data, including the limitations “generate a map which reconciles the
social content data with the guidelines” “extract from the map elements
related to mercantile intelligence;” and “output a mercantile intelligence
report with relation to the product, via determining a product utility value.”
The recited generation, extraction, and determination each involve
evaluating or judging the gathered data and producing some form of output
as a result of the evaluation or judgment. These evaluations or judgments
may be performed in the human mind or by pen and paper.
The Office Guidance also explains that “mental processes” include
acts that people can perform in their minds or using pen and paper, even if
the claim recites that a generic computer component performs the acts. See
Appeal 2019-001694
Application 13/316,950

10

2019 Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.”); see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”),
quoted in 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14.
We conclude that claim 13, therefore, recites concepts performed in
the human mind, which fall within the mental processes category of abstract
ideas identified in the Revised Guidance.
The recited limitations also relate to advertising, marketing, or sales
activity. In particular, the limitations “generate a map which reconciles the
social content data with the guidelines” “extract from the map elements
related to mercantile intelligence;” and “output a mercantile intelligence
report with relation to the product, via determining a product utility value”
each characterize evaluating the advertising, marketing, or sales activity
related to an identified product. We conclude that claim 13, therefore, also
recites commercial or legal interactions, which fall within the certain
methods of organizing human activity category of abstract ideas identified in
the Revised Guidance.
Because we conclude that claim 13 recites an abstract idea, we next
turn to Revised Guidance Step 2A, Prong 2.
Appeal 2019-001694
Application 13/316,950

11

Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
The “additional elements” recited in claim 13 include “at least one
processor” and “a computer readable storage medium having computer
readable program code embodied therewith,” which do not constitute
“additional elements that integrate the exception into a practical
application.” See id.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See 2019 Revised Guidance.
Appellant argues claim 13 is not directed to an abstract idea because it
is directed to an improvement to the technical field of product feature
evaluation. See Appeal Br. 19. Appellant argues the claims provide a method
for evaluating products and product features by mining information from
social content data from social media networks. See id. at 20. According to
Appellant, the claimed solution improves conventional techniques that rely
on manual processes that require human expertise and are slow and
inefficient. See id. at 21‒22. Appellant argues the claimed technical
Appeal 2019-001694
Application 13/316,950

12

improvements to programming permit the system to evaluate product
features in novel, non-obvious ways. See id. at 23‒24.
Appellant has not persuaded us of Examiner error. In cases involving
software innovations, such as here, the inquiry as to whether the claims are
directed to an abstract idea “often turns on whether the claims focus on ‘the
specific asserted improvement in computer capabilities . . . or, instead, on a
process that qualifies as an ‘abstract idea’ for which computers are invoked
merely as a tool.”’ Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303
(Fed. Cir. 2018) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335–36 (Fed. Cir. 2016)). The nature of claim 13 as a whole is not to define
a specific technological improvement; instead, claim 13 merely recites the
steps necessary to perform the abstract idea itself. Our reviewing court has
“made clear that mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1055 (Fed. Cir. 2017). Like the claims in Credit Acceptance, the focus of
claim 13 is on the abstract idea itself “and the recited generic computer
elements ‘are invoked merely as a tool.’” Id. (citing Enfish, 822 F.3d 1327);
see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed.
Cir. 2015) (collecting cases).
Appellant’s argument that claim 13 recites a specific technical
improvement is unpersuasive. Appellant argues that the invention improves
conventional techniques that relied on slow, inefficient manual processes.
See Appeal Br. 21‒22. But the claimed method automates a previously
manual task through an improvement to the abstract idea itself, not an
improvement in networking or computer functionality. See id. None of these
Appeal 2019-001694
Application 13/316,950

13

alleged improvements “enables a computer . . . to do things it could not do
before.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir.
2018) (emphasis added). Such claims, whose focus is “not a physical-realm
improvement but an improvement in wholly abstract ideas,” are not eligible
for patenting. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed.
Cir. 2018); see also Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
1346 (Fed. Cir. 2018) (“It is well-settled that placing an abstract idea in the
context of a computer does not ‘improve’ the computer or convert the idea
into a patent-eligible application of that idea.”).
Appellant’s argument relying on the speed and efficiency of the
claimed process in comparison to conventional manual techniques is also
unpersuasive. Mental processes remain unpatentable even when automated
to reduce the burden on the user of what once could have been done with
pen and paper. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson[, 409 U.S. 63, 67 (1972)].”). The
law is clear that programming a computer to perform what would otherwise
be an abstract idea is not sufficient to impart patent eligibility. See Alice, 573
U.S. at 224.
In other words, automating the generation of mercantile intelligence
reports, as in claim 13, “does not improve the functioning of the computer,
make it operate more efficiently, or solve any technological problem.”
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384–85 (Fed. Cir.
2019). Rather, the claim simply “includes instructions to implement an
abstract idea on a computer” and “does no more than generally link the use
Appeal 2019-001694
Application 13/316,950

14

of a judicial exception to a particular technological environment or field of
use.” 2019 Revised Guidance, 84 Fed. Reg. at 55.
Notably, the only additional elements recited in claim 13 are the “at
least one processor” and “a computer readable storage medium having
computer readable program code embodied therewith,” which are merely
used to achieve the claimed results and are not focused on “a specific means
or method that improves the relevant technology.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Appellant’s
Specification confirms the generic, conventional nature of the claimed
computer components. See, e.g., Spec. ¶¶ 27‒34.
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore,
conclude the judicial exception is not integrated into a practical application
under the Revised Guidance.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
Appellant argues the Examiner has failed to provide evidence that
claim 13 recites additional elements that are well-understood, routine, or
Appeal 2019-001694
Application 13/316,950

15

conventional activity. See Appeal Br. 25‒26. Appellant has not persuaded us
of Examiner error. The Examiner finds the Specification describes the
claimed computer system and its components as a general-purpose
computing device that does not provide any improvement over conventional
devices. See Ans. 6‒7 (citing Spec. ¶¶ 27‒34). We agree with the
Examiner’s findings. The Specification explains that “well-known
computing systems, environments, and/or configurations . . . may be suitable
for use with” the claimed computer system. See Spec. ¶ 27. The
Specification provides numerous examples of conventional computers that
may be used for each of the various computer components that are involved
in the claim. See id. ¶¶ 27‒39. Also, Appellant has not persuasively
identified any additional elements recited in claim 13 that amount to
significantly more than the claimed abstract idea.
For these reasons, we sustain the rejection of independent claim 13.
We also sustain the rejection of independent claim 14, for which Appellant
offers the same arguments. See Appeal Br. 16‒28; Reply Br. 15‒27. We also
sustain the rejection of dependent claims 15‒19 and 22‒25, for which
Appellant offers no separate argument. See id.

DECISION SUMMARY
In summary:
Claims Rejected 35
U.S.C. §
Basis Affirmed Reversed
13‒19, 22‒25 101 Eligibility 13‒19, 22‒25

Appeal 2019-001694
Application 13/316,950

16

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

AFFIRMED