Daniel F. Gruhl et al.

Patent Trials and Appeals Board

Mar 11, 2020

15010366 - (D) (P.T.A.B. Mar. 11, 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.
15/010,366 01/29/2016 Daniel F. Gruhl ARC920150013US1 8105
82531 7590 03/11/2020
Lieberman & Brandsdorfer, LLC
802 Still Creek Lane
Gaithersburg, MD 20878
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
03/11/2020 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 DANIEL F. GRUHL, JOSEPH M. KAUFMANN,
JOSEPH N. KOZHAYA, PABLO N. MENDES, and SRIDHAR
SUDARSAN

Appeal 2018-006469
Application 15/010,366
Technology Center 2600
____________

BEFORE DAVID M. KOHUT, BETH Z. SHAW, and
NORMAN H. BEAMER, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7, 9–13, 15–19, and 21–29. 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.
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BACKGROUND
According to Appellant, the invention is directed to identifying
components from a large body of content that is related to specific content.
Spec. ¶ 1. The invention attempts to solve the problem of “sifting through
an abundance of data to ascertain that data which is useful or otherwise
relevant to the task at hand.” Spec. ¶ 2.
Claims 7, 13, and 19 are the independent claims on appeal. Claim 7,
reproduced below, is illustrative of the claimed subject matter:
7. A computer program product for automatically identifying
linguistically related material within a computing environment,
the computer program product comprising:
a computer readable storage device readable by a processing unit
and having stored instructions for execution by the processing
unit for performing a method comprising:
initializing a target corpus;
identifying one or more initial key phrases from a domain
corpus related to the target corpus, the identification is based on
a statistical analysis of the domain corpus:
extracting the identified initial key phrases,
storing the extracted initial key phrases in a master list at
a first memory location;
employing an application to automatically expand the
target corpus, the automatic expansion including:
selecting one or more documents from a source corpus
stored at a second memory location;
selectively filtering the selected documents based on a
value associated with each key phrase in the master list and a first
linguistic relationship between each key phrase in the master list
and the selected one or more documents;
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populating the target corpus with the filtered documents;
identifying one or more new key phrases from the populated
target corpus;
assigning a first value to the identified one or more new
key phrases based on a second linguistic relationship to the target
corpus; and
adding the identified new key phrases to the master list,
and applying a union of the new key phrases to extract a second
set of related documents for populating to the populated target
corpus;
learning from the document filtering comprising:
identifying one or more secondary documents present in
the filtered list and absent from the target corpus;
identifying one or more secondary key phrases associated
with the secondary documents;
assigning a second value to the identified secondary key
phrases based on a third linguistic relationship to the target
domain; and
updating the master list for subsequent iterations, wherein
the master list update discounts the second value assigned to at
least one secondary key phrase; and
concluding the automatic expansion responsive to a
criteria of the target corpus.

REJECTIONS
Claims 7, 9–13, 15–19, and 21–29 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.

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ANALYSIS
Rejection of Claims 7, 9–13, 15–19, and 21–23, 25–26, and 28–29
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. 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 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 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
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
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
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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
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.
The PTO published revised guidance on the application of § 101.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (“Memorandum”). Under that
guidance, 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Id. 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 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.
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See 84 Fed. Reg. at 56.
Step 2A, Prong 1: “recites a judicial exception”
Under the first step of the Alice/Mayo framework, the Examiner
determines the claims are directed to the abstract idea of “analyzing text for
inclusion in a master list of text (i.e.[,] text analysis)” which the Examiner
asserts is a mental process. Final Act. 6; Ans. 2. The Examiner further
asserts the claims involve “comparing new and stored information and using
rules to identify options, and organizing, storing and transmitting
information” which are “steps that can be accomplished by a human using a
pen and paper.” Ans. 2. Appellant disagrees and argues that rather than
being directed to an abstract idea, the claims are directed to a “specific
method based on Appellant’s claimed elements (e.g., rules) for automatically
expanding a target corpus.” Appeal Br. 11–12; Reply Br. 2. We agree with
the Examiner.
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the “directed to” inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).

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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
Memorandum at 54–55.
The Specification provides evidence as to what the claimed invention
is directed to. In this case, the Specification discloses that the invention
relates to “identifying components from a large body of content that is
related to specific content,” or more specifically, to “identifying
linguistically relevant content.” Spec. ¶ 1. In order to identify linguistically
related content, the Specification states that
A target corpus is initialized to receive content, and a domain
corpus is provided in communication with the target corpus. At
least one initial key phrase is extracted from the domain corpus.
The extracted key phrase(s) is stored in a master list at a first
memory location. A user interface is employed to facilitate a
structured process for populating the target corpus with
linguistically related documents. More specifically, the user
interface is employed as a platform to: review the key phrase(s),
select one or more documents from a source corpus for potential
inclusion in the target corpus, filter a list of the selected
documents, populate the target corpus with one or more
documents from the filter list, and examine the target corpus. The
act of populating the target corpus may take place in multiple
iterations of key phrase review and document filtering.
Spec. ¶ 4.
Claim 7 provides further evidence. Claim 7 recites steps for
“initializing a target corpus” including “identifying one or more initial key
phrases from a domain corpus related to the target corpus . . . extracting the
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identified initial key phrases, storing the extracted initial key phrases in a
master list.” Claim 7 further recites “selecting one or more documents from
a source corpus . . . selectively filtering the selected documents based on a
value associated with each key phrase in the master list and a first linguistic
relationship between each key phrase in the master list and the selected one
or more documents . . . populating the target corpus with the filtered
documents; identifying one or more new key phrases from the populated
target corpus.” In short, claim 7 is directed to the mental process of
identifying components from a large body of content that is related to
specific content by identifying linguistically relevant content. See
Memorandum at 52. A person can mentally perform the above-mentioned
functions of claim 7 using pen and paper by analyzing collections of
documents, identifying key phrases, and recording the identified key
phrases. Ans. 5.
Step 2A, Prong 2: “does not integrate that exception into a
practical application”
The Examiner further asserts that the claims “do not seek to improve
any type of computer capability,” and “do not incorporate any rules in
improving text analysis or the identification [of] new text.” Ans. 4, 7.
Appellant argues that just as in Enfish, claim 7 is directed towards a
“specific implementation of a solution to a problem in the software arts.”
Appeal Br. 12 (citing Enfish, 822 F.3d at 1327). Appellant asserts that the
claimed master list has a parallel function to that of the self-referential table
claimed by Enfish in that the master list is a specific structure that functions
to improve the population of the target corpus. Id. Specifically, Appellant
asserts
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Appellant’s claims recite a master list which comprises a specific
structure to automatically expand a corpus. Namely, Appellant’s
claimed master list is stored in memory and includes key phrases
which have an assigned value which may be discounted if it was
not originally in the corpus. Appellant’s master list populates the
corpus with only linguistically relevant material based on the key
phrases and the associated value(s).
Id. We are not persuaded as we find no parallel between the self-referential
table of Enfish and the master list of the present claims. The self-referential
table of Enfish “is a specific type of data structure designed to improve the
way a computer stores and retrieves data in memory.” Id. (citing Enfish, 822
F.3d at 1339). Unlike the self-referential table of Enfish, the master list
claimed here is merely a generic storage for key phrases, values, and
linguistically relevant material. Appeal Br. 12; Spec. ¶ 4 (“The extracted
key phrase(s) is stored in a master list at a first memory location. . . . As
new documents are identified for inclusion in the target corpus, new key
phrases associated with the new documents are added to the master list.”).
To put it another way, Appellant’s master list merely acts as a storage for
“key phrases (208), which would be updated in subsequent iterations for
identifying relevant documents for expanding the target corpus.” Spec. ¶ 21.
As the master list recited here merely stores data for use in the claimed
process, it is not “a specific type of data structure designed to improve the
way a computer stores and retrieves data in memory.” See Enfish, 822 F.3d
at 1339.
We also do not find persuasive Appellant’s argument that the claimed
invention is not directed to a mental process. Appeal Br. 11–13. First,
Appellant asserts that the claims are similar in structure to those found
eligible in McRO. Appeal Br. 11–12 (citing McRO, Inc. v. Bandai Namco
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Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)). Specifically, Appellant
asserts that the claims are directed to “a specific method based on
Appellant’s claimed elements (e.g., rules) for automatically expanding a
target corpus and are not directed towards a result of analyzing text as
asserted by the Examiner.” Id. at 11; Reply Br. 4. However, we are not
persuaded that such rules amount to “a specific means or method [e.g.,
patentable subject matter] that improves the relevant technology.” McRO,
822 F.3d at 1314 (emphasis added). Rather, the recited rules merely
describe iteratively expanding a target corpus by selectively filtering one or
more documents based on a value associated with each key phrase. See
Appeal Br. 12. These rules do not incorporate an improvement to the
computer itself or any technological improvement in the iterative process,
text analysis or the identification of new text. Ans. 4–5.
To be sure, independent claim 7 does utilize computer components
such as a “computer readable storage device,” “processing unit,” and a
“memory” for performing the steps of identifying linguistically related
material. These components, however, are used in an ordinary manner, and
for their ordinary functions, and we are thus unpersuaded that independent
claim 7 recites any improvement to those components themselves. See
Manual Patent Examining Procedure (“MPEP”) § 2106.05(a); Spec. ¶ 49
(“These computer readable program instructions may be provided to a
processor of a general purpose computer, special purpose computer, or other
programmable data processing apparatus to produce a machine . . . which
execute via the processor of the computer.”). Claim 7 merely uses the
processing unit to analyze and store data. Hence, instead of a technical
improvement, the claimed steps merely automate the mental process of
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identifying linguistically related material. See Spec. ¶ 2. Moreover, the
asserted “reduction in ‘sifting through an abundance of data to [more
readily] ascertain that data which is useful or otherwise relevant to the task
at hand,’” results from the use of the computer to automate the mental
process, not on any claimed improvement to technology. The mere
automation of the mental process does not integrate the 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.”).
Accordingly, we conclude the claims recite identifying components
from a large body of content that is related to specific content, which is an
abstract idea in the form of a mental process because the steps of receiving
content and analyzing and filtering content using key phrases mimic human
thought processes of observation, evaluation, judgment, and opinion. See
Memorandum at 52.
Step 2B: “well-understood, routine, conventional”
We must now determine whether independent claim 7 recites any
elements additional to the abstract idea that are not well-understood, routine,
or conventional. See MPEP § 2106.05(d). We are unable to identify any.
The Examiner asserts,
The additional elements or combination of elements in the claims
other than the abstract idea per se (e.g.[,] use of computer, system
phrase “automatically”, application, and computer readable
medium, processing unit, target manager, extraction manager,
computer program product, user interface) amount to no more
than mere instructions to implement the idea on a computer,
and/or recitation of generic computer structure that serves to
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perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry. Viewed as a whole, these additional claim
elements do not provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract idea
such that the claims amounts to significantly more than the
abstract idea itself.
Final Act. 6–7. Appellant argues,
In contrast to the system alluded to by the Examiner as
being conventional and nonstatutory, Appellant directs the
PTAB to elements in independent claims 7, 13, and 19, and
specifically, the claimed “value”. Details of the value as related
to subsequent iterations are supported in paragraph 0027 of
Appellant’s Specification. Appellant’s claimed value, whether it
is an initial value or the value directed at a subsequent iteration,
corresponds to a numerical weight of a linguistic relationship of
the key phrases of a document, and therefore, the document
itself.
Appeal Br. 14. Appellant argues that “[e]mployment of conventional pen
and paper cannot and does not apply a numerical value to the linguistic
relationship, whether utilizing the initial value or a subsequent discount
value, as claimed by Appellant.” Id.
We are not persuaded by Appellant’s argument. As an initial matter,
we note that the use of a value as a weighting of a linguistic relationship of
the key phrases of a document is a constituent step of identifying
components from a large body of content that is related to specific content,
which is the abstract idea itself. Because the claimed “value” is part of the
abstract idea itself, it is not relevant to step 2B analysis. BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
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‘significantly more’ than that ineligible concept.”). Appellant’s argument
that the Examiner has failed to produce evidence that the claims, and
specifically the “value,” are not well-understood, routine, or convention as
required by Berkheimer is also unpersuasive for this reason. See Reply Br. 6
(citing Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)).
Even if the use of the “value” was not part of the abstract idea itself,
its use is purely conventional as a person performing the mental process of
analyzing collections of documents, identifying key phrases, and recording
the identified key phrases necessarily applies some value or weighting when
determining a linguistic relationship or relevance. Ans. 11. Moreover, the
use of a “value” in analyzing, comparing, and storing information are basic
computer functions, i.e., they are well-understood, routine, and conventional
functions previously known to the industry. See Elec. Power Grp., 830 F.3d
at 1356 (The claims “do not include any requirement for performing the
claimed functions of gathering, analyzing, and displaying in real time by use
of anything but entirely conventional, generic technology. The claims
therefore do not state an arguably inventive concept . . . .”); see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
Considered as an ordered combination, the generic computer of
Appellant’s method adds nothing that is not already present when the steps
are considered separately. For example, claim 7 does not, as discussed
above, purport to improve the functioning of the computer itself. Nor does it
affect an improvement in any other technology or technical field. Instead,
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claim 7 amounts to nothing significantly more than an instruction to apply
the abstract idea using a generic computer. That is not enough to transform
an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–
26.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 7. Claims 9–13, 15–19, and 21–23, 25–26, and 28–29 fall
with claim 7. See 37 C.F.R. § 41.37(c)(1)(iv).

35 U.S.C. § 101 Rejection of Claims 24 and 27
Appellant separately argues claims 24 and 27 asserting that the claims
provide limitations “beyond the abstract aspect of collecting and
comparing.” Appeal Br. 17. Specifically, Appellant argues that the claimed
step of ranking documents is not known or routine or conventional. Id. at
18. Further, Appellant asserts that the claimed step of ranking adds
significantly more to the abstract idea because it addresses a technological
problem in document storage and document management. Id. at 19–20
(citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed.
Cir. 2014)).
However, just as above, the claimed step of ranking documents is a
constituent step of identifying components from a large body of content that
is related to specific content, which is the abstract idea itself. Because the
claimed “ranking” is part of the abstract idea itself, it cannot supply the
inventive concept that renders the invention ‘significantly more’ than that
ineligible concept. BSG Tech, 899 F.3d at 1290. Hence, for the same
reasons described above, we are not persuaded that the Examiner erred in
rejecting claims 24 and 27.
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CONCLUSION
We AFFIRM the rejection of claims 7, 9–13, 15–19, and 21–29 under
35 U.S.C. § 101.
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7, 9–13,
15–19, 21–
29
101 Eligibility 7, 9–13,
15–19, 21–
29

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a).

AFFIRMED