Ex Parte Aït-Mokhtar

Patent Trial and Appeal Board

Mar 6, 2017

13103263 (P.T.A.B. Mar. 6, 2017)

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.
13/103,263 05/09/2011 Salah Ait-Mokhtar 20101633USNP-XER2625US01 8956
62095 7590 03/07/2017
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
WOZNIAK, JAMES S
ART UNIT PAPER NUMBER
2657
MAIL DATE DELIVERY MODE
03/07/2017 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 SALAH AIT-MOKHTAR
Appeal 2016-006978
Application 13/103,2631
Technology Center 2600
Before BRUCE R. WINSOR, JOHN R. KENNY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to “extracting information from text. . .
without prior knowledge as to whether the text includes a list.” Spec.
Abstract.
Illustrative Claim
Claim 1 is illustrative and reproduced below with bullet points added:
1 Appellant states the real party in interest is Xerox Corporation. App. Br. 1.
Appeal 2016-006978
Application 13/103,263
1. A method for extracting information from text, the method
comprising:
• providing parser rules adapted to processing of lists in text,
each list including a plurality of list items linked to a common
list introducer, the parser rules including rules for identifying
non-linguistic features which are expressed in a same
grammar formalism used for identifying linguistic features,
the parser rules including patterns that make use of the
linguistic and non-linguistic features;
• receiving text from which information is to be extracted, the
text including lines of text;
• segmenting the text into sentences;
• with a computer processor, for one of the sentences, with the
parser rules:
o identifying a set of candidate list items in the sentence,
each candidate list item being assigned a set of features,
the features comprising one of the non-linguistic
features and one of the linguistic features extracted
with the parser rules, the linguistic feature defining a
syntactic function of an element of the candidate list
item that is able to be in a syntactic dependency relation
with an element of an identified candidate list
introducer in the sentence; and
o generating a list which includes a plurality of list items,
comprising:
■ identifying list items from the candidate list
items which have compatible sets of features,
and
■ linking the list items to a common list introducer;
• extracting syntactic dependency relations between an element
of the list introducer and a respective element of each of the
plurality of list items of the list; and
• outputting information based on the extracted syntactic
dependency relations.
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Application 13/103,263
Rejection
Claims 1—25 stand rejected as unpatentable under 35 U.S.C. § 101 for
being directed to an abstract idea. Final Act. 6.
ISSUE
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 101 for
being directed to an abstract idea?
ANALYSIS
We adopt as our own the findings and reasons set forth by the
Examiner in the Answer. We highlight and address specific arguments and
findings for emphasis as follows.
To determine patentable subject matter, the Supreme Court has set
forth a two part test. “First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts” of “laws of nature,
natural phenomena, and abstract ideas.” Alice Corp. v. CLS BankInt 7, 134
S. Ct. 2347, 2355 (2014). For computer-related technologies, “the first step
in the Alice inquiry . . . asks whether the focus of the claims is 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,” such as “adding conventional computer components to
well-known business practices.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335-36, 1338 (Fed. Cir. 2016).
Here, we agree with the Examiner that the claims recite an algorithm
directed to a mental process. Ans. 7, 9—10. The Examiner provides
examples of lists humans commonly see, including “a list of employees,” a
“bill of materials,” and a list of “baseball players on the Washington
Nationals.” Id. at 9. For a human reading such lists, “indentations and
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Application 13/103,263
numbering readily notify a reader that the provided names are the list
elements.” Id. at 10. Thus, other than the requirement of a generic
processor, Appellant has not explained how the claims are not performed by
a human reading a list. See, e.g., Reply Br. 24; App. Br. 8, 10-11.
The claims’ requirement of a processor does not preclude ineligibility
under § 101. The Supreme Court has said “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2358
(2014). Thus, we agree the claims are directed to an abstract idea because
“with 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.” Intellectual Ventures ILLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016); see also Content
Extraction & Trans. LLC v. Wells Fargo Bank, Nat. Ass ’n, 776F.3dl343,
1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and
storage is undisputedly well-known. Indeed, humans have always
performed these functions.”).
In addition to the cases cited above, the claims here are similar to
those in Electric Power Group, LLC v. Alstom S.A., which involved
“receiving” data, “detecting and analyzing” events from that data, and
“displaying” the results. The Federal Circuit affirmed that such claims were
directed to ineligible subject matter under § 101:
Information as such is an intangible. Accordingly, we [the
Federal Circuit] have treated collecting information, including
when limited to particular content (which does not change its
character as information), as within the realm of abstract ideas.
In a similar vein, we have treated analyzing information by steps
people go through in their minds . . ., without more, as essentially
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Application 13/103,263
mental processes within the abstract-idea category. And we have
recognized that merely presenting the results of abstract
processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract
as an ancillary part of such collection and analysis.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir.
2016) (citations omitted).
In the second step, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)). The Supreme Court has
“described step two of this analysis as a search for an inventive concept—
i.e., an element or combination of elements that is sufficient to ensure that
the patent in practice amounts to significantly more than a patent upon the
ineligible concept itself.” Id. (quotation omitted).
Appellant contends the claims recite significantly more than an
abstract idea because the claims are allowable under §§102 and 103. App.
Br. 12—15, 19—20. Yet we agree with the Examiner that “this argument
conflates the standards of novelty (35 U.S.C. [§] 102) and non-obviousness
(35 U.S.C. [§] 103(a)) with the requirements of statutory subject matter (35
U.S.C. [§] 101). A lack of prior art does not direct a claim towards statutory
subject matter.” Ans. 7. For example, when Einstein first discovered the
equation E = me2, the formula may have been novel and non-obvious, but
it still was not patentable subject matter under § 101. As the Supreme Court
has said, “[t]he ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
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Application 13/103,263
a claim falls within the § 101 categories of possibly patentable subject
matter.” Diamond v. Diehr, 450 U.S. 175, 188—89 (1981).
Appellant further contends the claims are “limited to a very specific
application, the identification and processing of lists.” App. Br. 19. Yet we
agree with the Examiner that “the claim only extracts/gathers the
information” and “does not meaningfully apply the gathered information to
some useful process in a particular technological environment or employ a
particular machine.” Ans. 8. Moreover, even if “lists” were a particular
technology, the “Supreme Court and this court [the Federal Circuit] have
repeatedly made clear that merely limiting the field of use of the abstract
idea to a particular existing technological environment does not render the
claims any less abstract.” Affinity Labs of Texas, LLC v. DirecTV, LLC, 838
F.3d 1253, 1259 (Fed. Cir. 2016); Alice, 134 S. Ct. at 2358.
Appellant also contends “the use of a computer allows computations
far beyond what could be achieved by other means and thus render the
method tractable.” App. Br. 16. Yet “the fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C.
v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012); see also
FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (“the speed increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself’).
We also are not persuaded by Appellant’s arguments of patentability
because the claims “transform” data or “output” data. App. Br. 17. The
Federal Circuit has said “merely selecting information, by content or source,
for collection, analysis, and display does nothing significant to differentiate
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Application 13/103,263
a process from ordinary mental processes, whose implicit exclusion from
§101 undergirds the information-based category of abstract ideas.” Elec.
Power, 830 F.3d at 1355. As discussed above, Appellant has failed to rebut
the Examiner’s finding that the claims consist of merely a conventional
processor applying the same steps a human would when reading a list. Ans.
13; see also Intellectual Ventures, 838 F.3d at 1318 (rejecting patent owner’s
argument that the claims recited more than conventional computers because
“computers and the Internet do not have ‘rule engines’ as a matter of
course”). In fact, the Specification expressly states the processor can be
“general purpose.” Spec. 139. Given such “general purpose” components,
no improvement to the computer hardware, and no improvement to the
mental steps a human would do, the elements of the claims, whether
individually or as a combination, fail to do more than “simply stating the
abstract idea while adding the words ‘apply it.’” Alice, 134 S. Ct. at 2357
(quotation omitted).
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2—25, which Appellant argues are patentable for similar reasons. See
App. Br. 11, 17, 20; 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1—25. No time for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R. § 41.50(f).
AFFIRMED
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