Ex Parte Bagley et al

Patent Trial and Appeal Board

Jan 11, 2019

10853298 (P.T.A.B. Jan. 11, 2019)

.)
UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FffiST NAMED INVENTOR
10/853,298 · 05/25/2004 Elizabeth Vera Bagley
46320 7590 01/15/2019
Shutts & Bowen LLP
STEVEN M. GREENBERG
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RSW920040051USI 5440
EXALVIINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT 1 · PAPER NUl'vlll ER
3715
NOTIFICATION DATE DELIVERY MODE
01/15/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mai~ address(es):
docketing@crgolaw.com
sgreenberg@shutts.com
aschneider@shutts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PA TENT TRIAL AND APPEAL BOARD
Ex parte ELIZABETH VERA BAGLEY, BLAKE OSBORNE GOULETTE,
PAMELA ANN NESBITT, ROBERT CHRISTOPHER PEPPER, and
RONALD GARY SHAPIRO
Appeal2017-002635
Application 10/853,298 1
Technology Center 3 715
Before STEVEN D.A. McCARTHY, KEVIN F. TURNER, and
CARL M. DeFRANCO Administrative Patent Judges.
Opinion for the Board by TURNER, Administrative Patent Judge.
Opinion concurring by McCARTHY, Administrative Patent Judge.
TURNER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Office action dated
November 16, 2015 ("Final Act."), rejecting claims l, 3, 7-9, 12-14, and 17. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is IBM Corporation, the
assignee of this application. (Appeal Br. 2).
Appeal 2017-002635
Application 10/853,298
THE CLAIMED SUBJECT MATTER
The claims are directed to a method, an apparatus, and a computer program
product for dynamically creating electronic learning games. Spec. 110. Claims 1,
8, and 13 are independent. Claim 12, reproduced below, is illustrative of the
claimed subject matter:
1. A data processing system for dynamic construction of e-
learning games, comprising:
a computer with a processor and memory;
a learning object repository coupled to the computer and
holding learning objects that provide instructions to a student;
a learning object assessment object repository coupled to the
computer and holding learning object assessment objects;
a video repository coupled to the computer and storing a
plurality of videos, each video of the plurality of videos including a
start scene, one or more action scenes, and an end scene,
wherein the learning object repository, the learning object
assessment object repository, and the video repository each conform
to one of a Sharable Content Object Reference Model (SCORM) and
a standard for Learning Object Metadata (LOM); and
a game generator executing on the processor of the computer
and configured for
constructing a game list the constructing comprising
determining a list of learning object identifiers (IDs) from the
learning object assessment object repository, determining that
2 In response to a Notification of Non-Compliant Appeal Brief, mailed July 1,
2016, the Appellants refiled their Appeal Brief on August 1, 2016, to correct the
defective Appeal Brief, dated March 16, 2016 (hereinafter "Appeal Br."). The
responsive Appeal Brief contained an error in claim 1, whereby the claim did not
recite the limitation beginning with "upon determining that the student's answer is
incorrect" that was previously present. Thus, for purposes of this Appeal, we treat
claim 1 as the generally correct version present in the first-filed Appeal Brief dated
March 16, 2016 and reproduced herein.
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I
there is a learning object of the learning objects in the learning
object repository referenced on the list of learning object IDs to
be processed, and processing the learning object to form the
game list including retrieving both a catalog and also an entry
value for the learning object from the learning object repository
and also utilizing the catalog and· the entry value to retrieve a
learning object assessment object for the learning object from
the learning object assessment o~ject repository, the game list
including a set of questions, associated multiple-choice
responses to the set of questions, and corresponding answers to
the set of questions;
presenting a question from the set of questions and the
associated multiple-choice responses from the game list to the
student;
comparing a student's answer with a corresponding
correct answer;
upon determining that the student's answer is correct,
displaying a positive version of a selected action s·cene from the
one or more actions scenes indicating a positive outcome upon
obtaining the positive version of the selected action scene
indicating the positive outcome from the video repository; and
upon determining that the student's answer is incorrect,
displaying a negative version of the selected action scene from
the one or more actions scene indicating a negative outcome
upon obtaining the negative version of the selected action scene
indicating the negative outcome from the video repository.
Appeal Br. 21-23 (Claims Appendix) ..
REJECTION
Claims 1, 3, 7-9, 12-14, and 17 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.
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ANALYSIS
The § 1 OJ reiection
Appellants argue claims 1, 3, 7-9, 12-14, and 17 together. We select
claim 1 as representative. Thus, claims 3, 7-9, 12-14, and 17 will stand or fall
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Patent eligibility is assessed under 35 U.S.C. § 101, which states that an
invention is patent eligible if it claims a new and useful process, machine,
manufacture, or composition of matter. 35 U.S.C. § 101. The U.S. Supreme Court
has held that this statutory provision contains an important implicit exception: laws
of nature, natural phenomena, and abstract ideas are not patentable. E.g., Alice
Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014). But claiming the practical
application of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. ~289, 1293-94 (2012).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo
"for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those concepts."
Alice, 134 S. Ct. at 2355.
The first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are directed
to a patent-ineligible concept, the second step in the analysis is to consider the
elements of the claims "individually and 'as an ordered combination"' to determine
whether there are additional elements that "'transform the nature of the claim' into
patent-eligible application." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other
words, the second step is to "'search for an inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in practice
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amounts to significantly more than a patent upon the [ineligible concept] itself."'
Id. (alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
Under Mayo Step 1, the Examiner determined that claim 1 is directed to a
judicial exception-an abstract idea in the form of a method of organizing human
activity-because the claimed method can be performed by a human. Final Act. 3;
Answer (hereinafter "Ans.") 2, 5. In particular, the Examiner determined that
claim 1 is directed to software that generates lists of questions based upon the
scientific learning objective, and presents these questions to students in the form of
a learning game, wherein the student's answer dictates the type of subsequent
reinforcement video. Ans. 4. The Examiner explained that Appellants' claimed
subject matter is analogous to the patent-ineligible subject matter that was claimed
in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014). In
Ultramercial, the Examiner explained, the patent-ineligible claims were directed to
a person completing a condition, and upon completing that condition, the person
would receive media. Id. at 5 ( explaining that the "CAFC held that claims directed
to a method whereby after a person fulfilled a certain condition (watching a
sponsor message) he/she was then provided with media via the internet, such as a
video, to be abstract.").
In responding to the rejection, Appellants analogize the claimed subject
matter to a series of cases, and argued that the claimed subject matter is patent-
eligible because it recites specific steps that depart from the routine and
conventional sequence of events without foreclosing other ways to solve the
problem. Appeal Br. 17 ( explaining that the claimed subject matter is patent
eligible because:
similar to [DDR Holdings, LLC v. Hotels.com, LLC, 773 F.3d 1245,
1258 (Fed. Cir. 2014)] and in contrast to the claims of [Internet
Patents Corporation v .. Active Network, Inc., 790 F.3d 1343 (Fed. Cir.
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2015)], and in accordance with the jurisprudence of [Intellectual
Ventures I LLC v. Capital One Bank, 792 F.3d 1363 (Fed. Cir. 2015)],
Appellants' claim language indicates how the innovative concept is
achieved without foreclosing other ways of solving the problem
solved by Appellants' claims, in reciting a specific series of steps that
results in a departure from the routine and conventional sequence of
events, and therefore, are statutory under the law).
Further, Appellants argue that the Examiner did not properly apply the analysis of
En.fish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), as
explained by the Deputy Commissioner for Patent Examination Policy. Reply3 5-
10. Appellants argue that under a proper En.fish analysis, the claimed subject
matter is directed to a "process driven improvement to the functionality of the
computer" because the subject matter is claimed by performance of a specific
combination of steps. Id. at 8-10.
We agree with the Examiner. More specifically, we agree that claim 1 is
directed to the abstract idea of a method bf organizing human activity because the
claimed method can be performed by humans using a pencil and paper.
Claim 1 includes constructing a game list by: ( 1) processing the learning
object; (2) retrieving the learning object assessment object associated with the
learning object; (3) presenting a question to the student; ( 4) comparing the
student's answer to the correct answer; and (5) showing a positive video when the
answer is correct, or showing a negative video when the answer is incorrect.
This ordered combination of steps recites an abstract idea in the form of a
method of organizing human activity because it can be performed by humans using
a pencil and paper. The Examiner explains that the steps in claim 1
could be performed by, e.g., a first human being ( either in his/her head
and/or using pencil and paper) creating the claimed 'game list' by
3 Reply Brief filed December 5, 2016, hereinafter "Reply."
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following the claimed steps for doing so; the first human being could
then 'present[] a question ... from the game list' to a second human
being, either verbally and/or using pencil and paper; the first human
being could then compare the second human being's answer with 'a
corresponding correct answer'; and then the first human being (using a
VCR or DVD player and/or some other video player device) could then
present either the claimed positive or negative version of a selected
action scene based upon if the second human being's answer was
correct or incorrect.
Final Act. 3.
In Cybersource, the court held that claims may be patent-ineligible when
they are drawn to an unpatentable mental process, which is a subcategory of
unpatentable abstract ideas. Cybersource Corporation v. Retail Decisions, Inc,
654 F.3d 1366, 1371 (Fed. Cir. 2011). · More specifically, the court held that claims
read on unpatentable mental processes when the method steps can be performed by
the human mind. Id. at 1372 (explaining that the claim under review is directed to
unpatentable mental processes because "[a]ll of [the] claim's[] method steps can be
performed in the human mind, or by a human using a pen and paper."). The court
reasoned that method steps that can be performed by the human mind are patent-
ineligible subject matter because the "method ... can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under_§ 101." Id.
at 13 73. The court further explained that methods that are performed entirely by
the human mind are the "types of methods that embody the 'basic tools of
scientific and technological work' that are free to all men and reserved exclusively
to none." Id. (citing Gottschalk v. Benson, 409 U.S. 63, 67, 93 (1972)).
We determine that the ordered combination of steps performed in claim 1
are a method of organizing human activity because it can be performed by humans
using a pencil and paper. That the positive or negative feedback is displayed "from
a video repository" does not affect whether the claims are directed to an abstract
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idea. Our reviewing court has held that "the recitation of a database structure
slightly more detailed than a generic database does not save the asserted claims at
[Alice] step one." BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287 (Fed.
Cir. 2018). In support, the BSG court noted Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat'! Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014), in
which the claims were held to be an abstract idea despite the claims' recitation that
part of the method be performed on a scanner, and In re TL! Commc'ns LLC Patent
Litig., 823 F.3d 607, 611-13 (Fed. Cir. 2016), in which the claims were held to be
an abstract idea despite the claims' recitation of telephone units and servers. The
BSG court explained that while such recitations provide a "generic environment" in
which to carry out the abstract idea, they cannot save the claims from abstraction.
899 F.3d at 1286. For these same reasons, the claimed subject matter here is
patent-ineligible because it is directed to such an abstract idea.
By contrast, we are unpersuaded by the Appellants' argument that recitation
of a specific series of steps that depart from the routine and conventional sequence
of events, without foreclosing other ways of solving the problem is enough to
elevate the subject matter from patent-ineligible to patent-eligible. Appellants
created this rationale by analogizing the claimed subject matter to DDR. We
disagree with Appellants' argument and concur with the Examiner's analysis,
discussed below.
First, we agree with the Examiner that the instant claims are distinguishable
from the above referenced cases [DDR, Internet Patents, Intellectual Ventures]
because the claimed methods are not exclusive to a computer, i.e., the method can
be performed by a pencil and paper. Ans. 8-12; see also DDR, 773 F.3d at 1248
( explaining that the claimed subject matter "is directed to systems and methods of
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generating a composite web page that combines certain visual elements of a 'host'
website with content of a third-party merchant").
Second, we agree with the Examiner that specifically claiming a unique
process without foreclosing other methods to solve the problem is necessary but
not sufficient for patent-eligibility. Ans. 10-12; see also Ultramercial, 772 F.3d at
715 ( explaining that the court did not agree with Ultramercial "that the addition of
merely novel or non-routine components to the claimed idea necessarily turns an
abstraction into something concrete."); DDR, 773 F.3d at 1256 (explaining that
"[a]lthough the Supreme Court did not 'delimit the precise contours of the 'abstract
ideas' category"' in resolving Alice, over the course of several cases the Court has
provided some important principles). For these reasons, it is not enough that the
claim language recites a specific series of steps, which do not foreclose other ways
of solving the problem, without something more that would elevate the claimed
subject matter from patent-ineligible to patent-eligible.
We are also unpersuaded by Appellants' argument that the Examiner failed
to perform the proper Enfish analysis as explained by the Deputy Commissioner
for Patent Examination Policy. Reply 8-11. Rather, we agree with the Examiner's
analysis. See Final Act. 3; Ans. 2, 5. Appellant misconstrues the Examiner's
reason for disallowing the claims under Enjish. First, the Examiner did not
"doom" the claims because the claimed subject matter can "run on a general
purpose computer." The Examiner rejected the claims because the claimed method
is not exclusive to computers-the methods can be performed by humans using a
pencil and paper. Because the claimed methods can be performed by humans
using a pencil and paper, the claims are patent-ineligible for claiming an abstract
idea. Second, simply claiming the subject matter in a manner that requires
following a specific combination,of steps does not elevate an ineligible abstract
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idea to a patent-eligible subject matter. See Ultramercial, 772 F .3 d at 715
( explaining that the court did not agree with Ultramercial "that the addition of
merely novel or non-routine components to the claimed idea necessarily turns an
abstraction into something concrete."). For these reasons, we are unpersuaded by
Appellants' argument that the Examiner erred in its analysis under Enfish as
explained by the Deputy Commissioner for Patent Examination Policy.
In view of all these reasons, we are unpersuaded by Appellants' argument
that the Examiner erred in its analysis under the first step of the Mayo framework.
With respect to the second step of the Mayo framework, the Examiner
determined that ( 1) Appellants did not claim significantly more than the abstract
idea (Ans. 6; see also Final Act. 4 ( explaining that a "computer with a processor
and a memory," a ''video repository," and "a game generator executing on the
processor of the computer" are "generic, well-known, and conventional and,
thereby, not sufficient to amount to significantly more than the judicial
exception.")); (2) Appellants' claimed abstract idea fails the machine or
transformation test because it could be performed by human beings alone and
without the necessary use of a particular machine (Ans. 6); and (3) Appellants'
claimed computer embodiment does not result in the improved functionality of the
computer or databases (Ans. 7).
Appellants argue that the second step of the Mayo framework is concerned
with preemption. Reply 13-15. Appellants further argue that because their
claimed method avoids preemption, its claims are directed to patent eligible subject
matter. We disagree with Appellants' argument and concur with the Examiner.
More specifically, we agree that the Appellants did not claim more than the
abstract idea. As the Examiner explained, there are no additional elements that
amount to significantly more than the judicial exception-the computer devices are
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generic, well-known, and conventional. Final Act. 3-4; Ans. 6. In Alice, the Court
held that "[ a ]n instruction to apply the abstract idea of intermediated settlement
using some unspecified, generic computer is not 'enough' to transform the abstract
idea into a patent eligible invention.") (citing Mayo, 132 S. Ct. at 1298, 1297).
Further, we are unpersuaded that preemption alone is sufficient for patent
eligibility under step 2 of the Mayo framework. Preemption is a necessary clue for
patent eligibility, but it is not sufficient for patent eligibility. See DDR, 773 F .3d at
1256 (explaining that "[a]lthough the Supreme Court did not 'delimit the precise
contours of the 'abstract ideas' category"' in resolving Alice, over the course of
several cases the Court has provided some important principles); see also
Ultramercial, 772 F.3d at 716 (explaining that claims which recite an ordered
combination of steps can be an abstraction when they have no particular concrete
or tangible form); id. at 716 (explaining that when the "steps merely instruct[] the
practitioner to implement the abstract idea with 'routine conventional activit[ies],'
it[] is insufficient to transform the patent-ineligible abstract idea into patent-
eligible subject matter.").
For these reasons, we are unpersuaded by Appellants' argument that the
Examiner erred in its analysis under the second step of the Mayo framework.
Appellants also argue that the Examiner presented new arguments when ( 1)
the Examiner for the first time presented a legal basis in support of the Examiner's
conclusions regarding the two-part Mayo framework, and (2) the Examiner cited to
Enfish for the first time in the Examiner's Answer. We are unpersuaded by
Appellants' argument. As stated in the Manual of Patent Examining Procedure,
"[t]here is no new ground of rejection when the basic thrust of the rejection
remains the same such that an appellant has been given a fair opportunity to react
to the rejection." MPEP § 1207.03(a). Here, the basic thrust of the Examiner's
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rejection in the Answer is the same when compared to the Final Rejection. In the
Final Rejection, the Examiner used the Mayo framework to argue the claimed
invention was directed to an abstract idea, and the claims lacked additional
elements that elevated the subject matter from patent-ineligible to patent-eligible.
This argument did not change in the Examiner's Answer. The Examiner merely
included more detail in the Answer by specifically referencing the two-part Mayo
framework and citing to Enfish. Because the argument did not change from the
Final Rejection to the Answer, the basic thrust of the rejection stayed the same.
For this reason, we are unpersuaded by Appellants' argument that the
Examiner presented new arguments in the Examiner's Answer.
In view of the above, we are unpersuaded of error. For the above reasons,
we affirm the rejection of claim 1 under 35 U.S.C. § 101 as patent-ineligible
subject matter.
In addition, although we determine that claims 3, 7-9, 12-14, and 17 stand
or fall with claim 1, we note that the Examiner has made similar determinations
with respect to the other independent claims and also determined that the
dependent claims do not recite limitations that "are sufficient to amount to
significantly more than the judicial exception." Final Act. 3-5; Ans. 2.
DECISION
The Examiner's rejection of claims 1, 3, 7-9, 12-14, and 17 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PA TENT TRIAL AND APPEAL BOARD
Ex parte ELIZABETH VERA BAGLEY,
BLAKE OSBORNE GOULETTE,
PAMELA ANN NESBITT,
ROBERT CHRISTOPHER PEPPER and
RONALD GARY SHAPIRO
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Application 10/853,298
Technology Center 3700
McCARTHY, Administrative Patent Judge, concurring.
I concur in the result.