Ex Parte Fakhrai

Patent Trial and Appeal Board

Jun 26, 2018

13468009 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/468,009
153575 7590
Makoui Law, PC
3336 Alginet Dr.
Encino, CA 91436
FILING DATE FIRST NAMED INVENTOR
05/09/2012 Delaram Fakhrai
06/28/2018
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.
DLRT.P0002 1074
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
docket@makouilaw.com
ali@makouilaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DELARAM F AKHRAI
Appeal2017-001275
Application 13/468,009 1
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Delaram Fakhrai ("Appellant") seeks review under 35 U.S.C. § 134(a)
of the Examiner's decision, as set forth in the Final Office Action dated
October 14, 2015 ("Final Act."), rejecting claims 13-16, 22-29, and 31--42. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Delart Technology Services LLC as the real
party in interest. Appeal Br. 2.
2 Claims 1-12, 17-21, 30, and 43 have been cancelled. Id. at 22, 23, 26, 31
(Claims App.).
Appeal2017-001275
Application 13/468,009
CLAIMED SUBJECT MATTER
Claims 13 and 31 are independent. Claim 13, reproduced below,
illustrates the claimed subject matter:
13. A non-transitory machine readable medium storing a
program for sharing course material among a plurality of
instructors in an online learning system, the program executable
by at least one processing unit[], the program comprising sets of
instructions for:
receiving a request for searching for relevant course
material for a first course taught by an instructor of the online
learning system without receiving a search criteria;
identifying (i) courses having same objectives and
requirements as the first course, (ii) courses linking to a same
suggested learning material, and (iii) courses with enrolled
student users searching for a same content as the content
searched by students enrolled in the first course;
specifying the identified courses as courses similar to the
first course;
searching for relevant course material for the first course
based on the courses identified as similar to the first course;
providing a set of relevant course material items found in
the search sorted based on a set of ranking and assessment
criteria;
receiving an identification of a course material item in the
provided set of relevant course material items to share for
teaching the first course;
sending a request to an owner of the identified course
material item to authorize sharing of the identified course
material item; and
allowing sharing of the identified course material by the
instructor for teaching the first course when an authorization for
sharing the identified course material items is received from the
owner.
Appeal Br. 22 (Claims App.).
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REJECTION
Claims 13-16, 22-29, and 31--42 are rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.
ANALYSIS
Patent-Ineligible Subject Matter
The Supreme Court has provided a two-step framework "for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355
(2014). The first step of the Alice test is to determine whether the claims at
issue are directed to one of those ineligible concepts. Id. If they are not, the
claims satisfy § 101. Id. If they are, the second step of the Alice test is to
"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." Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., [566 U.S. 66, 79] (2012)).
The Supreme Court characterizes the second step 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. (quoting Mayo, 566
U.S. at 72-73).
As to Alice step 1, the Examiner determines that claims 13 and 31 are
directed to several abstract ideas; namely, a series of mental steps that could
be carried out by a person using a pen and paper for collecting and
organizing information, and "creating a contractual relationship among a set
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of instructors for sharing course material, which is a fundamental economic
practice." Final Act. 2--4. As to Alice step 2, the Examiner determines that
the additional claim elements other than the abstract idea amount to no more
than "mere instructions to implement an abstract idea on a computer." Id. at
3. The Examiner finds that the additional elements, that is, "using a
computer processor to perform the series of steps and utilizing the content in
an online environment," are well-understood, routine, and conventional
operations performed by a generic computer. Id. at 4. The Examiner
determines that, viewed as a whole, the additional elements do not provide
meaningful limitations to transform the abstract idea into a patent eligible
application of the abstract idea such that the claims amount to significantly
more than the abstract idea itself. Id. at 3.
Additionally, the Examiner determines that dependent claims 22, 25,
26, 28, 29, 35, 38, 39, 41, and 42 likewise do not recite additional limitations
that are sufficient to transform the abstract idea into a patent eligible
application of the abstract idea. Id. at 4.
Claims 13 and 31
Appellant contests the rejection of claims 13 and 31 collectively.
Appeal Br. 13-18. We select claim 13 as representative, with claim 31
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Alice Step 1
Appellant notes exemplary decisions by our reviewing courts in which
claims have been found to be directed to an abstract idea. Appeal Br. 14--15.
Then, Appellant contends, "[h]ere, the claims recite [a] program and method
for sharing course material among a plurality of instructors in an online
learning system and do not fall into any of the above mentioned examples."
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Id. at 15 (emphasis added). Therefore, Appellant concludes, the claims do
not fall into any judicial exception. Id. The Examiner responds that this
argument does not address specifically the Examiner's characterization of
the claims as being directed to several abstract ideas. Ans. 3. Appellant
replies that, in Enfzsh LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), the court noted that, when determining whether a claim is directed to
an abstract idea in Alice step one, it is appropriate to compare the claim to
other claims that have already been found to be directed to an abstract idea
in a previous court decision. Reply Br. 4--5.
We agree it is appropriate to compare claim 13 to other claims that
previously have been found directed to an abstract idea. We note that, for
Alice step 1, "the decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided." Amdocs
(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016)). However, to the extent it is Appellant's position that the
Examiner is precluded from finding a claimed concept patent-ineligible
unless it "fall[ s] into" a concept previously identified as abstract in one of
the specific decisions Appellant cites, we disagree. Appellant's reliance on
Enfzsh does not provide support for not having to address the abstract ideas
identified by the Examiner.
Moreover, claim 13 relates to routine data manipulation concepts,
which have been identified by our reviewing court as abstract ideas. As
noted by Appellant, "using categories to organize, store and transmit
information" has been identified as an abstract idea. Appeal Br. 14 (citing
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Cyberfone Sys. v. CNN Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir.
2014) (non-precedential). Additionally, abstract ideas include the concepts
of collecting data, recognizing certain data within the collected data set, and
storing the data in memory. Content Extraction & Transmission LLC v.
Wells Fargo Bank, NA., 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("The
concept of data collection, recognition, and storage is undisputedly well-
known."). Additionally, the collection of information and analysis of
information (e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353. Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
Claim 13 is directed to "[a] non-transitory machine readable medium
storing a program for sharing course material among a plurality of
instructors in an online learning system." Appeal Br. 22 (Claims App.). As
claimed, "the program [is] executable by at least one processing unit[]" and
"compris[ es] sets of instructions." Id. As such, claim 13 pertains to
software. The recited steps for sharing the course material include "[a]
receiving a request for searching for relevant course material for a first
course taught by an instructor of the online learning system without
receiving a search criteria." Id. (emphasis added). Step "a" requires
receiving a request for searching for data (relevant course material) without
a user providing a search criteria.
Claim 13 also recites the step of "[b] identifYing (i) courses having
same objectives and requirements as the first course, (ii) courses linking to a
same suggested learning material, and (iii) courses with enrolled student
users searching for a same content as the content searched by students
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enrolled in the first course." Id. (emphasis added). Step "b" requires
identifying other courses based on comparisons to "objectives and
requirements" and "suggested learning material" for the first course, and the
content searched by students enrolled in the first course. Accordingly, step
"b" relates to the concepts of "recognizing certain data within [a] collected
data set" and "data collection." See Content Extraction, 776 F.3d at 1347.
Claim 13 further recites the step of" [ c] specifYing the identified
courses as courses similar to the first course." Appeal Br. 22 (Claims App.
(emphasis added)). This step relates to the concept of labeling or
categorizing collected data.
Claim 13 further recites the step of"[ d] searching for relevant course
material for the first course based on the courses identified as similar to the
first course." Id. (emphasis added). This step relates to the concept of
comparing data to collected data.
Claim 13 also recites the steps of "[e] providing a set of relevant
course material items found in the search sorted based on a set of ranking
and assessment criteria" and "[ f] receiving an identification of a course
material item in the provided set of relevant course material items to share
for teaching the first course." Id. (emphasis added). Accordingly, step "e"
relates to the concepts of analyzing data (see Elec. Power, 830 F.3d at 1353)
and "manipulating data" (Intellectual Ventures I LLC, 850 F.3d at 1340).
Step "f' relates to the concepts of transmitting and receiving data.
Finally, claim 13 recites the steps of "[g] sending a request to an
owner of the identified course material item to authorize sharing of the
identified course material item" and "[h] allowing sharing of the identified
course material by the instructor for teaching the first course when an
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authorization for sharing the identified course material items is received
from the owner." Appeal Br. 22 (Claims App. (emphasis added)).
Accordingly, steps "g" and "h" also relate to the concept of transmitting and
receiving information, as well as to the concept of forming an agreement
between parties, which is a fundamental economic practice. Thus, claim 13
relates to concepts that have been identified as abstract ideas in the cases
cited above, and as determined by the Examiner.
We note that, "[i]n cases involving software innovations, [the Alice
step 1] inquiry often turns on whether the claims focus on 'the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an "abstract idea" for which computers are invoked merely
as a tool."' Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1303
(Fed. Cir. 2018) (citing Enfzsh, 822 F.3d at 1335-36). Appellant does not
show that the claimed steps provide an improvement in the capabilities of
the recited "at least one processing unit[]," rather than "[the at least one
processing unit being] invoked merely as a tool" to execute the recited steps.
Id.
For these reasons, we are not persuaded that the Examiner erred in
finding that claim 13 is directed to several abstract ideas.
Alice Step 2
Regarding Alice step 2, Appellant contends that, even assuming the
claims are directed to a judicial exception, the claims are still patent eligible
because the claimed invention provides advantages that are neither well-
understood, routine, nor conventional in the field. Appeal Br. 15-16. In
support, Appellant substantially reproduces the features recited in claim 13,
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and then asserts that such a method of sharing material for online courses is
not well-understood, routine, or conventional. Id.
This contention is not persuasive. Appellant fails to explain what
specific "advantages" are purportedly produced by the claimed subject
matter. In addition, Appellant does not explain persuasively why any
particular step, or any particular ordered combination of steps, is not well-
understood, routine, or conventional. As discussed above with regard to
Alice step 1, claim 13 recites features that relate to well-known data
manipulation and agreement concepts.
The Examiner submits that "the ordered combination of these steps,
while not being explicitly found in the prior art, does not represent an
improvement to the computer or any technology or technological field."
Ans. 4. Rather, the Examiner submits, "the claim utilizes a generic
computer to perform a series of steps that may represent an improvement to
the field of sharing course material among instructors. The field of
developing and sharing educational material for courses existed in the pre-
computer world, for instance through writing and selling paper textbooks."
Id.
In reply, Appellant characterizes the purported improvement as "an
improved process for searching relevant course material." Reply Br. 5.
This does not explain persuasively how the claimed subject matter is an
improvement with regard to other processes of searching for relevant course
material, or identify which specific claim elements purportedly provide such
improvement. Rather, this contention is effectively just a different way of
saying that the claimed subject matter is an improved abstract idea, which is
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insufficient to transform an abstract idea into patent-eligible subject matter.
Accordingly, this contention is not persuasive.
Appellant also contends that the Specification discloses "specialized
components, servers, and databases that are used to implement the claimed
invention." Id. (citing Spec. pp. 79-82, Fig. 40). According to Appellant,
"the improvements are defined by specialized logical structures and
processes." Id. at 6.
This contention is not persuasive. Claim 13 recites no "specialized
components, servers, [or] databases." For example, the claim does not
explicitly limit the processing units(s). We note that the Specification
describes, for example, that electronic system 4100 may be, for example, "a
desktop computer, personal computer, [or] tablet computer." Spec. p. 83, 11.
3-5. Such "processing units" are considered as generic, not "specialized."
Nor does Appellant explain persuasively how the claim requires
"specialized" databases, also where none are recited.
Appellant further contends that the Examiner has failed to consider
the specific language of the claims, and has characterized the claimed
method at a high level of abstraction. Reply Br. 6.
This contention is not persuasive. Appellant does not persuasively
address the Examiner's characterization of the claim as being related to
different abstract ideas. Further, as discussed above, the claimed steps can
be characterized as relating to well-known concepts for data manipulation,
including collecting, recognizing, organizing, sharing, and transmitting data,
and to a contractual relationship for sharing course material items. We do
not agree that this characterization of the claimed subject matter fails to
consider the specific claim language.
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Appellant further contends that the claimed invention amounts to
significantly more than simply organizing and comparing data, but provides
advantages not well-understood, routine, or conventional in the art. Reply
Br. 7-8. In support, Appellant substantially reproduces features recited in
claim 13 and asserts that "[s]uch a method of sharing material for online
courses is not well-understood, routine, or conventional." Id. at 8.
This contention does not explain persuasively why the claimed subject
matter is more than well-understood, routine, or conventional. Claim 13
merely utilizes "at least one processing unit[]" to execute the recited steps of
the program and does not recite any additional elements that transform the
nature of the claim into a patent-eligible application. Alice, 134 S. Ct. at
2355.
Appellant also contends that the claims do not preempt all uses of a
judicial exception and, particularly, "all uses of sharing course material
among a plurality of instructors in an online learning system." Appeal Br.
16-17. Rather, Appellant contends, the claims only recite "a very narrow
and particular method of sharing course material among a plurality of
instructors in an online learning system." Id. at 16. Appellant contends that
"there are many other references already in the same field of art with earlier
filing dates and the current application has no way of preempting all uses of
the alleged judicial exception," and the claims do not preempt any future use
of a judicial exception. Id. at 17. The Examiner responds that "pre-emption
is not a stand-alone test of patent eligibility." Ans. 4. In reply, Appellant
acknowledges that "preemption may not be a stand-alone test for eligibility,"
but it has an important role to play in the analysis. Reply Br. 9.
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We are not persuaded by Appellant's argument. Although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant also contends, "although sharing course material has been
done by humans, the recited method of identifying and sharing the course
material is not done by humans in the past." Appeal Br. 17-18. Appellant
asserts that the Examiner has not cited any reference that discloses the
recited method has been performed without the use of a computer or
machine. Id. at 18.
This contention is not persuasive. "[A ]nalyzing information by steps
people [can] go through in their minds, or by mathematical algorithms,
without more [are] mental processes within the abstract-idea category."
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016) (quoting Elec. Power, 830 F.3d at 1354). The Examiner determines
that the recited steps could be done without a computer, that is, "by a person
using for example a pen and paper." Final Act. 3. Appellant does not
provide any persuasive reason why the Examiner's position is in error.
Appellant acknowledges that humans have shared course material in the
past. Appeal Br. 17-18. Claim 13 does not limit the number of courses
from which the "identified courses" are identified, or limit the type or
amount of "relevant course material" associated with the "identified
courses." Even if using the "at least one processing unit[]" rather than "a
pen and paper" would allow the recited steps to be executed more
efficiently, or using more data, for example, we are not persuaded that the
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use of such generic processing tools transforms the claim into patent-eligible
subject matter.
For the foregoing reasons, we sustain the rejection of claim 13 as
being directed to patent ineligible subject matter. Claim 31 falls with claim
13.
Claims 22, 25, 26, 28, 29, 35, 38, 39, 41, and 42
Appellant essentially reproduces the language of a representative set
of these claims (i.e., claims 35, 38, 39, and 41) and then contends that the
dependent claims strengthen the argument presented for claims 13 and 3 1.
Appeal Br. 18-21. The Examiner responds that the limitations in the
dependent claims merely further limit the judicial exceptions embodied in
claims 13 and 31. Ans. 5.
Appellant's contentions are not persuasive. To the extent the features
of respective representative claims have been pointed out, this is considered
no more than a general allegation of patentability and is not considered a
separate argument for patentability. See 37 C.F.R. § 41.37(c)(l)(iv) ("A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and naked
assertion that the corresponding elements were not found in the prior art.").
Accordingly, we sustain the rejection of dependent claims 22, 25, 26, 28, 29,
35, 38, 39, 41, and 42 as being directed to patent ineligible subject matter.
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DECISION
We affirm the rejection of claims 13-16, 22-29, and 31--42.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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