Ex Parte Barnhart

Patent Trials and Appeals Board

Mar 22, 2019

14499659 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/499,659 09/29/2014
138317 7590 03/26/2019
Quarles & Brady LLP (Pearson Edu)
Attn: IP Docket
411 E. Wisconsin Ave.
Suite 2350
Milwaukee, WI 53202
FIRST NAMED INVENTOR
Randall Barnhart
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.
0239.01.0.US (.00152) 9424
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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-mail address(es):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDALL BARNHART
Appeal2017-004776
Application 14/499,659
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1--4, 7-11, 14--18, 22, and 24--28 under 35 U.S.C. § 101. 2
An oral hearing was conducted on February 28, 2019, and a transcript of the
1 Pearson Education, Inc. (''AppeHanf'), the applicant as provided for under
37 C.F.R. § 1.46, is also identified as the real party in interest. Br. 3.
2 Appeal is taken from the Final Office Action dated June 3, 2016. Claims
5, 6, 12, 13, 19, and 20 were cancelled pursuant to a Response after Final
Amendment dated August 26, 2015 ( entered by the Advisory Action dated
September 9, 2015), and claims 21 and 23 were cancelled pursuant to a
Response after Final Amendment dated August 1, 2016 (apparently entered
in view of the Notice of Decision from Post-Prosecution Pilot Program (P3)
Conference dated August 17, 2016, which lists claims 1--4, 7-11, 14--18, 22,
and 24--28 as the rejected claims).
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hearing is available in the record (the "Transcript"). We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A method for determining sequences for electronic
presentation of electronic educational content objects, the
method comprising:
receiving, at a server and via one or more uploads from
one or more content-provider devices, a set of electronic
educational content objects, each electronic educational content
object in the set of electronic educational content objects, the
server being connected to each of the one more content provider
devices via a network;
automatically generating, for each electronic educational
content object in the set of electronic educational content objects,
metadata for the electronic educational content object that
identifies a type of file, from amongst a set of educational-object
file types, of the electronic educational content object;
identifying a target proportion of representation of an
educational-item file type in the set of educational-item file
types;
accessing a past sequence of educational-item file types,
the past sequence of educational-item file types including a series
of identifiers of educational-item file types in the set of
educational-item file types;
for each educational-item file type in the set of
educational-item file types:
appending an identifier of the educational-item file
type to the past sequence of educational-item file types to
produce a potential sequence;
determining an entropy of the potential sequence;
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determining a proportion of the identifiers in the
past sequence or potential sequence that identify the
educational-item file type; and
determining a score based on the entropy, the
proportion and the target proportion for the educational-
item file type;
selecting an educational-item file type from
amongst the set of educational-item file types based on the
determined scores;
appending the past sequence with the selected
educational-item file type, such that the selected
educational-item file type is associated with a sequence
position in the appended sequence;
identifying a plurality of electronic educational
content objects from amongst the set of electronic
educational content objects, each of the plurality of
electronic educational content objects being associated
with metadata that identifies the electronic educational
content object as being of the selected educational-item
file type;
using a pseudo-random selection technique to select
an electronic educational content object from amongst the
plurality of electronic educational content objects; and
transmitting the electronic educational content
object from the server, over the network and to a learner
electronic device so as to facilitate an electronic
presentation of the electronic educational content object at
the learner device after a presentation of one or more other
electronic content objects associated with sequence
positions before the sequence position in the appended
sequence.
ANALYSIS
Appellant argues claims 1--4, 7-11, 14--18, 22, and 24--28 as a group.
Br. 14--19. We select claim 1 as representative, with claims 2--4, 7-11, 14--
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18, 22, and 24--28 standing or falling with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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'!, 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. 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
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rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
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
Supreme 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 176; see also id. at 192 ("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 Supreme 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. (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 tum 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 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]
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generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("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 interactions 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)).
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. See Memorandum.
Step 2A. Prong 1. of the Memorandum: Whether the claim recites a iudicial
exception
Regarding independent claim 1, the Examiner determines that
although the claims recite a method (which is undisputedly within a statutory
category), the claims are directed to a judicial exception: an abstract idea. 3
Final Act. 3--4. The Examiner notes that "[t]he majority of the claim
3 The Examiner provides no further analysis for claims 2--4, 7-11, 14--18, 22,
and 24--28. See Final Act. 2-5; Ans. 3-8.
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limitation[ s] seem[] to be directed to a method that calculates and decides
the type of educational content object that can be appended ... in the field of
computer ... training," wherein "the process is computer implemented." Id.
at 4. The Examiner also determines that claim 1 is directed to "a series of
instruction[ s] or algorithm[ s ]" that represent "a type [ of] organization and
comparison of data which can be performed mentally." Id. (emphasis added)
(citing Cyberfone Sys., LLC v. CNN Interactive Group, Inc., 558 F. App'x
988, 992 (Fed. Cir. 2014) (nonprecedential); SmartGene, Inc. v. Adv. Bio.
Labs. SA, 555 F. App'x 950 (Fed. Cir. 2014) (nonprecedential)). Thus, we
understand that the Examiner rejects independent claim 1 as patent-ineligible
because claim 1 is directed to the judicial exception of an abstract idea
within the subject matter grouping of mental processes, and more
specifically, that claim 1 is directed to a mental process involving a set of
instructions for manipulating data to determine a sequence of presenting
educational content to a learner in the same way a teacher may mentally
classify and select the sequence of educational content for presentation to a
student, wherein the set of instructions are simply applied on a computer. 4
Appellant argues that the claims are "subject matter eligible and do
not fall into any exception," in that "none of the claims are directed to an
abstract idea." Br. 14; see also Transcript 6 ("the two independent claims
include a method claim and a system claim, which we believe overcomes
4 Because the Examiner's rejection places the claims in the judicial
exception grouping of mental processes, and not mathematical concepts or
certain methods of organizing human activity, Appellant's argument that the
claims do not fall into the judicial exceptions groupings of mathematical
concepts and/or certain methods of organizing human activity are not
persuasive. See Transcript 7.
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Step 1 "). In support, Appellant submits that the Examiner "inaccurately
characterizes the claims as 'directed [to] a method that calculates and
decides the type of content objects that can be appended'" and "ignores the
many other innovative5 elements of the claims directed to determining
exactly why and how the content objects are selected to append." Br. 14. In
other words, Appellant submits that the Examiner has "oversimplified" the
claims. Id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016) ( for warning against the oversimplification of claims); see also id. at
15 ( arguing that the Examiner's determination that "the claims are directed
to calculating and deciding the type of content objects that can be appended
is greatly over-simplifying the claims"). In particular, Appellant contends
that
claim 1 includes a detailed combination of actions for selecting
a file type including determining an entropy, proportion, and
score for each of multiple file types to potentially be appended to
a sequence. Other claim 1 elements include selecting particular
electronic content objects based on: metadata of each of a
plurality of content items, the sequence, and a pseudo-random
selection technique, and finally, after all of this, sending the
selected content object to a learner device. These technical
features extend well beyond merely calculating and deciding the
type of content objects that can be appended.
Id. Appellant concludes that, similar to DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014), "the claims set forth a sophisticated
5 Notably, "[e]ligibility and novelty are separate inquiries." Two-Way
Media Ltd. v. Comcast Cable Comm 'ns, LLC, 874 F.3d 1329, 1339--40 (Fed.
Cir. 2017); see also Affinity Labs of Texas, LLC v. DIRECTTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016) (holding that "[e]ven assuming" that a
particular claimed feature was novel does not "avoid the problem of
abstractness").
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ordered combination of steps that rely on computer functions to overcome a
technical problem of selecting a file type and electronic content object." Id.
at 15-16.
We are not persuaded by Appellant's argument that the technical
features recited in claim 1 extend beyond a mental process involving a set of
instructions for manipulating data to determine a sequence of presenting
educational content to a learner, which set of instructions are applied on a
computer. 6 See, e.g., Memorandum, fn 14 ("[i]f 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") ( citations omitted). The Memorandum defines "mental processes" as
"concepts performed in the human mind (including an observation,
evaluation, judgment, opinion)." Memorandum, 84 Fed. Reg. at 52-53
( footnote omitted)).
We analyze certain limitations of claim 1, individually and as set forth
supra, in support of our determination that such limitations may be
performed in the human mind or with pen and paper. First, the claim
limitation, "automatically generating, for each electronic educational content
object in the set of electronic educational content objects, metadata for the
electronic educational content object that identifies a type of file, from
amongst a set of educational-object file types, of the electronic educational
6 See, e.g., Transcript 5 ( characterizing the claimed invention as
"deliver[ing] optimized content to a user device"); id. 8-9 (wherein
Appellant agrees that the claimed method steps are analogous to a teacher
assembling a list of test questions by determining which types of question to
include, "in the non-computerized world").
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content object," requires classifying data ( or content objects 7) by generating
metadata 8 according to file type9, which may be performed mentally by a
content provider10 (i.e., teacher) using observation, evaluation, judgment,
and/or opinion, for example, with the aid of pen and paper. In support, the
Specification specifically discloses that metadata "can be provided by a
content provider 105 and/or automatically generated based on provided
content objects" Spec. ,r 16 (emphasis added).
The claim limitation "identifying a target proportion of representation
of an educational-item file type in the set of educational-item file types," as
set forth supra, can be performed in the human mind or with pen and paper,
7 Appellant submits that "questions in [a] math test" are examples of
objects. Transcript 3; see also Spec. ,r 17 (disclosing that "[c]ontent objects
can include documents ( e.g., articles, worksheets, or tutorials), presentations
webpages and/or media files (e.g., videos, graphics, or audio files)").
8 An ordinary meaning of the claim term "metadata," consistent with the
Specification is "data that provides information about other data."
http//www.merriam-webster.com/dictionary/metadata (last visited Mar. 14,
2019); see also Spec. ,r 16 ("each metadata element characteriz[ es] an
associated content object"); id. ,r 17 ("metadata includes characteristics of an
associated content object and can include, e.g., one or more topics ( e.g.,
keywords), a brief summary, a title, a type of object, and/or a skill level").
Appellant submits that the metadata for identifying a type of file may be, for
example, "addition, subtraction, multiplication, division," for a math test
question object. Transcript 3.
9 Absent a specific definition for the claim terms "type of file" or "file type"
in the Specification, we determine that the file type is the characterization
provided by the metadata, for example, a topic, such as mathematics. See,
e.g., Spec. ,r 17.
10 The Specification discloses that content provider 105 is a person. Spec.
,r 15 ("a party 105"); thus, we understand that an example of content
provider 105 is a teacher.
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because a teacher, for example, may mathematically 11 determine the amount
( or proportion) of a certain educational-item file type (i.e., content objects
with metadata characterizing the content objects as a mathematics file type),
in comparison to content objects identified by the metadata as being within
file types representative of other subjects (i.e., literature) in the curriculum.
See, e.g., Spec. ,r 35 ("[b]ased on the learner-specific topic availabilities and
weights, a target-proportion definer 245 can identify a set of target or desired
proportions, where each proportion identifies a target fraction of a sequence
devoted to a particular topic," wherein "target sequence proportions can be
set by normalizing the weights of those topics relative to the weights' sum").
The claim limitation, "accessing a past sequence of educational-item
file types, the past sequence of educational-item file types including a series
of identifiers of educational-item file types in the set of educational-item file
types," as set forth supra, can be performed in the human mind or with a pen
and paper, because a teacher may access and mentally review past
curriculums (for example, embodied on paper) to determine the
representation and presentation sequence of subjects within the past
curriculum, including giving consideration to identifiers 12 ( or metadata for
the file type, which identifies the content object).
11 Although claim 1 does not recite an algorithm, it is well established that
algorithms are abstract ideas. See, e.g., Alice, 134 S. Ct at 2355.
12 The Specification does not provide a definition for "identifier," and thus,
we understand an "identifier" to mean "one that identifies."
https://www.merriam-webster,com/dictionary/identifer (last visited Mar. 14,
2009); see Spec. ,r 6 ("[t]he past sequence of topics includes a series of
identifiers for topics in the set of educational topics," wherein "an identifier
for the educational topic is appended to the past sequence of topics to
produce a potential sequence"). Thus, we understand the claimed "series of
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The next claim limitation requires performing a series of steps "for
each educational-item file type in the set of educational-item file types."
First in this series of steps, claim 1 requires, as set forth supra, "appending
an identifier of the educational-item file type to the past sequence of
educational-item file types to produce a potential sequence," which step can
be performed in the mind or with pen and paper, because a teacher may add
or supplement identifiers to subjects presented in a past sequence to create a
potential sequence. See, e.g., Spec. ,r 38 ("[p]otential sequence builder 305
can then construct a set of potential sequences - each including an available
topic ( or set of available topics) appended to the past sequence," wherein
"[i]n some instances, a potential sequence is generated for each available
topic").
Next, the series of steps for each educational-item file type, requires,
as set forth in claim 1 supra, "determining an entropy of the potential
sequence," "determining a proportion of the identifiers in the past sequence
or potential sequence that identify the educational-item file type," and
"determining a score based on the entropy, the proportion and the target
proportion for the educational-item file type," each of which are steps that
can be performed in the human mind or with pen and paper, because a
teacher may mathematically make such determinations without the use of a
computer. Determining a proportion, is addressed supra. See also Spec. ,r
59 ("proportion-delta engine 310 determines a proportion for the potential
topic"). Regarding determining entropy, the Specification discloses using an
"algorithm to assess variation in a sequence" (id. ,r 41 ("[t]he entropy can
identifiers" or "an identifier" to be distinct from metadata identifying the
type of file, which provides an additional level of identification.
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include a Shannon entropy, which can include a cumulative sum ... of a
product of a probability of a topic occurring in part or all of a sequence and a
base-2 log of the probability")). Scoring is disclosed as using "combiner
3 2 0 [to] combine the proportion metric and the entropy metric to generate a
score," for example, wherein each metric may be normalized and/or
weighted. See, e.g., id. ,r,r 44--45.
Regarding the claim step of determining entropy, Appellant relies on
Veracode for contending that the claims are eligible because it would be
extremely difficult or impossible to perform the steps of the method
manually. 13 Br. 18 (citing Veracode, Inc. v. Appthority, Inc., 137 F.Supp.3d
17 (D. Mass. 2015)). Appellant argues that "determining an entropy for
each of multiple potential sequences and using a pseudo-random selection
technique to select an educational content object," when "such actions
[arise] in the context of other claim features are - at worst - not possible,
and- at best-painful." Id. However, unlike Veracode, Appellant has not
provided persuasive evidence that the process of claim 1 is so complex that
performing the steps of the method mentally cannot be done. See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir.
2012) ("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").
13 See Transcript 8 (arguing that, in the claimed method, "there are steps that
are specific to a computer, ... for example assigning metadata and storing it
appropriately is not something I could do in my head ... [ o Jr delivering
content").
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Continuing our analysis of whether the claims are directed to a
judicial exception, we determine that the claim limitation, "selecting an
educational-item file type from amongst the set of educational-item file
types based on the determined scores," as set forth supra, is a step that can
be performed in the human mind or with pen and paper, because a teacher
may mentally (and manually) analyze the scores to select the file type, rather
than using "topic selection engine 320" as disclosed in the Specification.
See, e.g., Spec. ,r 46.
The claim limitation, "appending the past sequence with the selected
educational-item file type, such that the selected educational-item file type is
associated with a sequence position in the appended sequence," as set forth
supra, is a step that can be performed in the human mind or with pen and
paper, because a teacher may append the selected file type into the past
sequence, for example, by adding the file type into the past curriculum and
associating a position within the sequence of file types presented in the
curriculum to the selected file type. See, e.g., Spec. ,r 58 ("[t]he potential
sequence can be generated by appending the potential topic to the past
sequence").
The claim limitation, "identifying a plurality of electronic educational
content objects from amongst the set of electronic educational content
objects, each of the plurality of electronic educational content objects being
associated with metadata that identifies the electronic educational content
object as being of the selected educational-item file type," as set forth supra,
is a step that can be performed in the human mind or with pen and paper,
because a teacher can make such a selection based on the classification of
the data ( or content objects), as discussed supra.
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Finally, the claim limitation "using a pseudo-random selection
technique to select an electronic educational content object from amongst
the plurality of electronic educational content objects," as set forth supra, is
a step that can be performed in the human mind or with pen and paper,
because a teacher may use such a mathematical pseudo-random selection
technique, using pen and paper, to select the content objects. See, e.g., Spec.
,r 63 ("[fJor example, content manager 205 may identify all content objects
with a topic weight above a threshold for the selected topic and may then
randomly select a content object").
In sum, the Specification supports the Examiner's determination that
the above-identified claimed method steps can be accomplished in the
human mind or with pen and paper, for example, by a teacher using
observation, evaluation, judgment, and/or opinion. Such a determination is
not altered by implicitly claiming algorithms and/or by applying the mental
process by claiming generic computing components. 14
Notably, the present claims are similar to the claims analyzed in
CyberSource Corp. v. Retail Decisions Inc., 654 F.3d 1366 (Fed. Cir. 2011);
see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47
14 Notably, independent claim 1, as originally filed, did not require
computing components; rather, the following claim terms were added by
amendments: "electronic educational content objects," "electronic
presentation," "electronic educational questions" and "electronic
presentation" (Amendment dated July 23, 2015); "file," as in ""educational-
item file type" (Amendment dated August 26, 2015 (with a statement that
"[n]o new matter is added by these amendments" on page 11)); and the
recitation of "a server" and the steps of "automatically generating ...
metadata," "transmitting the electronic educational content objects from the
server, over the network and to an electronic device" (Amendment dated
January 5, 2016).
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(Fed. Cir. 2016) ("While the Supreme Court has altered the§ 101 analysis
since CyberSource in cases like Mayo and Alice, we continue to 'treat [ ]
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.'" ( quoting Elec. Power Grp. v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)). In CyberSource, claim 3, for
example, of the patent at issue, involved a method for verifying the validity
of a credit card transaction over the Internet, comprising the steps of (a)
obtaining information about other transactions that have utilized an Internet
address that is identified with the credit card transaction, (b) constructing a
map of credit card numbers based upon the other transactions; and ( c)
utilizing the map of credit card numbers to determine if the credit card
transaction is valid. See CyberSource at 1370.
The Court in CyberSource determined, with respect to step (a), that
"[t]he Internet is merely described as the source of the data" and also that
mere data-gathering steps cannot make an otherwise nonstatutory claim
statutory. Id. (citing In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989); see
also id. at 13 71 ("even if some physical steps are required to obtain
information from the database ( e.g., entering a query via a keyboard,
clicking a mouse), such data-gathering steps cannot alone confer
patentability" ( citation omitted)). Regarding step (b ), the Court determined
that "a person may 'construct[] a map of credit card numbers' ... by writing
down a list of credit card transactions made form a particular IP address." Id.
at 1372 (citation omitted). The Court concluded that "[a]ll of claim 3's steps
can all be performed in the human mind," and that "such a method that can
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be performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101." Id. The Court explained that
Id.
[ m ]ethods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with
claiming mental method steps as part of a process containing
non-mental steps, but rather because computational methods
which can be performed entirely in 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.
Similar to step (a) of claim 3 in Cybersource, the step of claim 1
supra requires automatically generating metadata for each electronic
educational content object involves gathering and classifying data,
notwithstanding recitation of a network, the automatic generation of data,
electronic content, metadata, files, and identifiers. Similar to step (b) of
claim 3 in Cybersource, the steps of claim 1 supra that require (paraphrased)
identifying a target proportion, accessing a past sequence, and for each
educational-item file type: appending an identifier to produce a potential
sequence, and determining an entropy for the potential sequence, a
proportion of the identifiers for the past or potential sequences, and a score;
and further, selecting an educational-item file type based on the score,
appending the past sequence with the selected educational-item file type,
identifying content objects of the selected educational-item file type, and
using a pseudo-random selection technique to select an electronic
educational content object-similar to the construction of the map in
Cybersource-may be performed by a teacher, as discussed supra.
In other words, as in Cybersource, claim 1 as set forth supra, is a method
that can be performed by human thought alone ( albeit applied on a
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computer), and therefore, recites an abstract idea, not patent-eligible under§
101.
Thus, claim 1 recites an abstract idea, within the subject matter
grouping of mental process, because claim 1 involves a set of instructions
for manipulating data to determine a sequence of presenting educational
content to a learner, which may be performed in the mind and/or with pen
and paper.
Step 2A. Prong 2. of the Memorandum: Do additional elements integrate
the exception into a practical application of the exception?
Next, in accordance with the Memorandum, we evaluate whether the
claim as a whole integrates the mental process into a practical application of
the mental process by identifying whether there are any additional elements
recited in the claim beyond the judicial exception, and evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application. Memorandum, 84
Fed. Reg. at 54--55.
Two additional claim elements, reproduced below, are omitted from
our analysis under Step 2A, Prong 1, because the elements are not steps in a
mental process (i.e., cannot be performed mentally).
receiving, at a server and via one or more uploads from
one or more content-provider devices, a set of electronic
educational content objects, each electronic educational content
object in the set of electronic educational content objects, the
server being connected to each of the one more content provider
devices via a network;
transmitting the electronic educational content object from
the server, over the network and to a learner electronic device so
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as to facilitate an electronic presentation of the electronic
educational content object at the learner device after a
presentation of one or more other electronic content objects
associated with sequence positions before the sequence position
in the appended sequence.
Appeal Br. 20-21 (Claims App.). We determine that these limitations
simply use a computer (i.e., server, network, learner electronic device,
computing components for the electronic presentation and manipulation of
electronic files, and electronic data) as a tool to apply the mental process,
and further, represent insignificant extra-solution activity. In other words,
the claimed mental process is "for determining sequences for electronic
presentation of electronic educational content objects," and the steps of
receiving at a server uploads of the content objects to begin the claimed
process and transmitting content to a learner electronic device to end the
claimed method is insufficient to confer patent eligibility. See, e.g., Parker
v. Flook, 437 U.S. 584, 590 (step of adjusting an alarm limit based on the
output of a mathematical formula was 'post-solution activity' and did not
render method patent eligible).
Appellant argues that "[ s ]imilar to the claims at issue in Enfish, the
pending claims provide a specific improvement in the way computers
operate as an improvement in an existing technological process." Br. 15.
More particularly, Appellant submits that
[t]he present claims address a problem specifically arising in
computer technology, which is to identify a file type of an
electronic educational content object to be presented. The claims
then set forth a detailed ordered combination of actions through
which this problem is addressed, which involves detections and
processing based on file-type metadata. Further yet, a part of this
processing involves a determination of entropy of multiple
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potential sequences (which is, in practice, a very complex
calculation) and using a pseudo-random selection technique.
Id. at 16; see also Transcript 10 (arguing that "it's in the intake of the
content being received from a computer device," "classification," and
"delivery of that content that provides that practical application").
As stated in the Memorandum, whether an additional element reflects
an improvement in the functioning of a computer is a consideration
indicative that the additional element may have integrated the exception into
a practical application. Memorandum, 84 Fed. Reg. at 55. However, the
Memorandum also recognizes that "[t]he courts have also identified
examples in which a judicial exception has not been integrated into a
practical application," for example, when "[a]n additional element merely
recites the words 'apply it' ( or equivalent) with the judicial exception, or
merely includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea." Id. (citations
omitted). In other words, claim 1 addresses interleaving teaching topics to
provide variation to a learner, but does not solve a problem arising in
computer technology. See, e.g., Spec. ,r 3; see Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) ("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").
Appellant also appears to argue that the claims integrate the mental
process into a practical application as an improvement to a technology or
technological field other than the functioning of a computer (see, e.g.,
Memorandum 55), for example, improving "the technological process of
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providing ongoing educational content electronically to a learner in a
proportion and variety necessary to keep the learner engaged while
encouraging mastery of the necessary subject matter." Br. 16. However,
aside from the computing components-and considering claim 1 as a whole,
there is no integration of the abstract idea, only the mental process itself (i.e.,
a set of instructions that can performed mentally).
Appellant further argues that the claims, "similar to the claims found
to be patent-eligible in Bascom, 'do not preempt the use of the abstract idea'
... , but rather recite 'a specific, discrete implementation of the abstract
idea." Br. 19 (citation omitted). However, we determine that specifically
claiming a unique process without foreclosing other methods to solve the
problem is necessary but not sufficient for patent-eligibility. See, e.g.,
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015 (holding that "[ w ]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility" and that "[w]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, ... preemption
concerns are fully addressed and made moot").
In sum, we determine that the additional limitations analyzed supra
fail to integrate the mental process (i.e., abstract idea) into a practical
application of the judicial exception.
Step 2B of the Memorandum: If the claim is directed to a ;udicial exception,
evaluate whether the claim provides an inventive concept
The Memorandum explains that "[i]t is possible that a claim that does
not 'integrate' a recited judicial exception is nonetheless patent eligible," for
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example, because "the claim may recite additional elements that render the
claim patent eligible even though a judicial exception is recited in a separate
claim element." Memorandum, 84 Fed. Reg. at 56. In other words, "the
additional elements recited in the claims provided 'significantly more' than
the recited judicial exception (e.g., because the additional elements were
unconventional in combination)." Id.
Appellant argues that "the combination of elements in the claims
amount to an inventive step." Br. 16 ( citing Bascom Global Internet v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)); see also Transcript 7
(arguing that that, similar to examples 38 and 39 accompanying the
Memorandum, the claimed combination of steps that involve the gathering
of data include an inventive concept, because the steps are performed in an
unconventional way). In particular, Appellant submits that "the present
claims provide an individualized solution to each learner just as the filtering
was individualized in Bascom," and that "[t]he electronic educational
content provided to the learner in the present claims provide a highly
specific solution tailored to particular file-type data and target proportion,
such that variability and proportionality can be promoted in a variety of
particular learning contexts." Id. at 17. Appellant submits that the Examiner
has not rejected the claims pursuant to 35 U.S.C. §§ 102, 103, which is
evident the claims amount to significantly more than the judicial exception.
Id. at 18-19.
The features that Appellant identifies as "significant]y more," i.e.,
determining entropy, proportion, and a score for selecting educational
content and presenting the content to a learner, are, however, paii of the
abstract idea itself: i.e., mental processes. As such, these claim limitations
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cannot constitute the "inventive concept." Berkheimer v. HP, Inc., 890 F.3d
1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) ("It is clear from Mayo
that the 'inventive concept' cannot be the abstract idea itself, and
Berkheimer ... leave[ s] untouched the numerous cases from this court
which have held claims ineligible because the only alleged 'inventive
concept' is the abstract idea."); see also BSG Tech. LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) ("Our precedent has consistently
employed this same approach. If a claim's only 'inventive concept' is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea.").
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and claims 2--4, 7-11, 14--18, 22, and 24--28 fall therewith.
DECISION
The Examiner's rejection of claims 1--4, 7-11, 14--18, 22, and 24--28
under 35 U.S.C. § 101 is AFFIRMED.
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.
§ 1.136(a)(l )(iv).
AFFIRMED
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