Ex Parte Jamrog et al

Patent Trials and Appeals Board

Mar 29, 2019

14107313 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/107,313 12/16/2013
40412 7590 04/02/2019
IBM CORPORATION-AUSTIN (JVL)
C/0 LESLIE A. VAN LEEUWEN
6123 PEBBLE GARDEN CT.
AUSTIN, TX 78739
FIRST NAMED INVENTOR
Daniel M. Jamrog
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.
A US920130281 US 1 1063
EXAMINER
VO,HUYENX
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
leslie@vI-patents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL M. JAMROG, JASON D. LAVOIE,
NICHOLAS W. ORRICK, and KRISTIN A. WITHERSPOON
Appeal 2018-004112
Application 14/107 ,313
Technology Center 2600
Before CARLA M. KRIVAK, ERIC B. CHEN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 2, 5, 6, 8, 9, 12, 13, 15, 16, 19, and 20. Claims 3, 4, 7, 10, 11, 14,
17, and 18 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to a Question and Answer (QA) System,
an artificially intelligent computer system capable of answering questions
posed in natural language. (i-f 1.)
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Claim 1 is exemplary:
1. A method, in an information handling system
comprising a processor and a memory, of adjusting time
dependent terminology in a question and answering (QA)
computer system, the method comprising:
[i] ingesting a set of documents to produce a base corpus,
the base corpus stored in a computer-readable data store
accessible by the QA computer system;
[ii] acquiring a plurality of lexicons from one or more
feeds from social media;
[iii] performing a semantic analysis of one or more terms
in the plurality of lexicons, wherein the semantic analysis
determines a context and a current usage for the one or more
terms;
[iv] in response to determining that the current usage of a
selected term differs from a standard usage of the selected term,
updating a trend value corresponding to the lexicon associated
with the selected term;
[ v] updating the base corpus of the QA computer system
according to the plurality of lexicons, the updating resulting in
an updated corpus; and
[ vi] answering, by the QA computer system, a question
according to the updated corpus, wherein the answering
comprises:
searching the updated corpus for a plurality of
candidate answers to the question, wherein at least one of
the plurality of candidate answers is associated with one
of the plurality of lexicons;
scoring the plurality of candidate answers, wherein
the scoring for each answer is based partly on the trend
value of the lexicon associated with the candidate
answer; and
providing one or more of the plurality of candidate
answers based on the scoring.
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Claims 1, 2, 5, 6, 8, 9, 12, 13, 15, 16, 19, and 20 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter.
ANALYSIS
We are unpersuaded by Appellants' arguments (App. Br. 8-13; see
also Reply Br. 2--4) that independent claims 1, 8, and 15 are directed to
patent-eligible subject matter under 35 U.S.C. § 101.
The Examiner determined that "claims 1, 8, and 15 are directed to a
patent-ineligible abstract concept of adjusting time dependent terminology in
a question and answering system" and "[a]ll the steps of ... claims 1, 8, and
15 are an abstract concept that could be performed in the human mind, or by
a human using a pen and paper." (Final Act. 3.) In particular, the Examiner
determined that "a human can observe text of social media posts and assign
trend scores to each lexicon, and then update the corpus with the lexicons
(for recording the lexicons on paper and/or adjusting scores of existing
lexicons)" and "[ a ]t runtime, when a question is received, a human can
search the corpus (lexicons recorded paper) and provide one or more
answers associated with lexicons that have scores above a certain threshold
level." ( Ans. 3.) The Examiner further determined that "claims 1, 8, and 15
do not have any additional limitations that represent a patent-eligible
application of the abstract concept." (Final Act. 4.) We agree with the
Examiner's determinations and ultimate conclusion that the claims are
directed to patent-ineligible subject matter.
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
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implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., 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
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
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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] 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). Under that guidance, we first look to whether the
claim recites:
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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 are 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 84 Fed. Reg. at 56.
Step One
Are the claims at issue directed
to a patent-ineligible concept?
Claim 1 is a method claim, which falls within the "process" category
of 35 U.S.C. § 101. Likewise, claim 8 is a system claim having several
steps, which falls within the "manufacture" category of 35 U.S.C. § 101 and
category of 35 U.S.C. § 101, and claim 15 is a computer readable medium
claim, which falls within the "manufacture" category of 35 U.S.C. § 101.
Therefore, claims 1, 8, and 15 fall within one of the four statutory categories
of patentable subject matter identified by 35 U.S.C. §101
Although claims 1, 8, and 15 fall within the statutory categories, we
must still determine whether the claims are directed to a judicial exception,
namely an abstract idea. See Alice, 134 S. Ct. at 2355. Thus, we must
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determine whether the claims recite a judicial exception and whether the
exception is integrated into a practical application. See 84 Fed. Reg. at 52-
5 5. If both elements are satisfied, the claim is directed to a judicial
exception under the first step of the Alice/Mayo test. See id.
Step 2A, Prong One
Independent claim 1 is a method claim, and includes the following
limitations: "[i] ingesting a set of documents to produce a base corpus ... ,"
"[ii] acquiring a plurality of lexicons ... ," and "[iii] performing a semantic
analysis of one or more terms in the plurality of lexicons, wherein the
semantic analysis determines a context and a current usage for the one or
more terms." Thus, the method steps of claim 1 involve mental processes.
In particular, the method steps of claim 1 can be performed either by human
thought alone, by a human using pen and paper, or by humans without a
computer. For example, a person could: (1) read several national news
stories; (2) receive queries with respect to the national news involving
infrequently used terms ( e.g., "budget sequestration" or "filibuster"); and (3)
research the meaning of such infrequently used terms.
Independent claim 1 further includes the following limitations: "[iv]
in response to determining that the current usage of a selected term differs
from a standard usage of the selected term, updating a trend value
corresponding to the lexicon associated with the selected term," "[ v]
updating the base corpus ... according to the plurality of lexicons, the
updating resulting in an updated corpus," and"[ vi] answering ... a question
according to the updated corpus." Likewise, these remaining method steps
of claim 1 involve mental processes, and can also be performed either by
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human thought alone, by a human using pen and paper, or by humans
without a computer. For example, a person could: (1) manually or mentally
track the number of times a query is made with respect to "budget
sequestration" and "filibuster"; (2) read additional news stories with respect
to the Congressional budgeting process; and (3) answer the original query.
Specifically, with respect to the"[ vi] answering," as determined by the
Examiner, "a human can observe text of social media posts and assign trend
scores to each lexicon, and then update the corpus with the lexicons" and
"when a question is received, a human can search the corpus (lexicons
recorded paper) and provide one or more answers associated with lexicons
that have scores above a certain threshold level" thus, answering a question
based on the scoring, as claimed. (Ans. 3.)
Because all the method steps of claim 1 can be performed either by
human thought alone, by a human using pen and paper, or by humans
without a computer, claim 1 is directed to mental processes, which is an
abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
13 66, 13 72-73 (Fed. Cir. 2011) ("[U]npatentable mental processes" include
"steps [that] can be performed in the human mind, or by a human using a
pen and paper"); see also Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) ("[t]he series of steps covered by
the asserted claims ... could all be performed by humans without a
computer").
Claims 8 and 15 recite limitations similar to those discussed with
respect to claim 1. Thus, claims 8 and 15 are also directed to a judicial
exception.
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Step 2A, Prong Two
Because claims 1, 8, and 15 are directed to a judicial exception, we
next determine if the claims recite additional elements that integrate the
judicial exception into a practical application.
Method claim 1 recites "[i] ingesting a set of documents to produce a
base corpus, the base corpus stored in a computer-readable data store
accessible by the QA computer system," "[ii] acquiring a plurality of
lexicons from one or more feeds from social media," "[ v] updating the base
corpus of the QA computer system according to the plurality of lexicons,"
and"[ vi] answering, by the QA computer system, a question according to the
updated corpus" ( emphases added).
Thus, the recited "a computer-readable data store," "feeds from social
media," and "QA computer system," are merely tools for performing the
abstract idea. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 (Fed. Cir.
2016) ("the claims are directed not to an improvement in cellular telephones
but simply to the use of cellular telephones as tools in the aid of a process
focused on an abstract idea"). Accordingly, we determine claims 1, 8, and
15 do not recite additional elements that integrate the judicial exception into
a practical application.
First, Appellants argue that the "claims are inextricably tied to and
necessarily rooted in computer technology, i.e. the field of question and
answering (QA) computer systems, and are distinct from the types of
concepts found by the courts to be abstract" and "Appellant claims specific
improvements in the technical field of QA computer systems, particularly in
order to provide better and more accurate answers to a user." (App. Br. 8.)
However, other than conclusory stating that the claims recite "specific
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improvements in the technical field of QA computer systems" similar to
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
Appellants have not provided any additional explanation or evidence to
support this position.
Second, Appellants argue that "the Examiner describes Appellant's
claims 'at a high level of abstraction untethered from the language of the
claim when determining the focus of the claimed invention' and "[t]he
Examiner's unreasonably high-level and overly-generalized view of
Appellant's claims leads to the erroneous conclusion that Appellant's claims
are directed to an 'abstract concept that could be performed in the human
mind, or by a human using a pen and paper."' (App. Br. 10.) However, the
Examiner has identified the appropriate judicial exception as "mental
processes" and the Examiner has compared the claimed concepts of
independent claim 1 to the appropriate Federal Circuit decision (i.e.,
CyberSource). Accordingly, the Examiner has met the burden of a general
prima facie notice requirement. See In re Jung, 637 F.3d 1356, 1363 (Fed.
Cir. 2011) ("[A]ll that is required of the [Patent] [O]ffice to meet its prima
facie burden of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132.").
Third, Appellants argue that the limitations recited in claim 1 "could
not be performed by a human, either in the mind or using a pen and paper,
that result in an updated corpus for use by a QA computer system" and
"Appellant is at a loss to understand how a human could acquire lexicons
from social media feeds, semantically analyze the terms in the lexicons,
update trend values, and end up with an updated corpus to be used by a QA
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computer system to answer questions." (App. Br. 11; see also Reply Br. 2-
4.) However, the Examiner has provided a reasonable explanation as to how
the limitations of claim 1 are related to "mental processes." (Ans. 3.)
Appellants, other than providing a conclusory statement that "[ t ]hese are
specific limitations, that could not be performed by a human, either in the
mind or using a pen and paper" (App. Br. 11 ), have not provided any
persuasive arguments as to why the Examiner's determinations are
improper. Moreover, "the inability for the human mind to perform each
claim step does not alone confer patentability." FairWarning, IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016).
Last, Appellants argue that similar to Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016), the "claims are 'directed to a specific
implementation of a solution to a problem in the software arts,' i.e.
improving the fields of QA computer systems and adjusting time dependent
terminology in a QA system in order to provide better and more accurate
answers to a user" and "when looking at Appellant's Specification, it is clear
that the claimed invention does not merely invoke the computer as a tool,
but improves the capabilities of the QA computer system." (App. Br. 13.)
However, other than providing a conclusory statement that the "invention
seeks to improve on conventional approaches by introducing 'context
attributes' to assist a processor," Appellants have not provided any
additional explanation or evidence to support this position. For example,
Appellants have not provided citations to the Specification to demonstrate
that the claimed invention is an improvement of an existing technology or
demonstrated a deficiency in the prior art. See Enfzsh, 822 F.3d at 1337
(Fed. Cir. 2016) ("[O]ur conclusion that the claims are directed to an
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improvement of an existing technology is bolstered by the specification's
teachings that the claimed invention achieves other benefits over
conventional databases, such as increased flexibility, faster search times, and
smaller memory requirements").
Thus, we determine Appellants' claims do not integrate the judicial
exception into a practical application, as there is no meaningful limit
imposed on the judicial exception (i.e., there is no improvement in the
functioning of a computer or improvement to technology).
Step 2B
Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Because claims 1, 8, and 15 are directed to a judicial exception, we
next determine, according to Alice, whether these claims recite an element,
or combination of elements, that is enough to ensure that the claim is
directed to significantly more than an abstract idea. That is, does an
additional element or combination of elements add a specific limitation that
is not well-understood, routing, conventional activity in the field?
Claim 1 is a method claim, which includes a "computer-readable data
store," "QA computer system," and "feeds from social media." Claim 8, a
system claim, and claim 15, a computer readable medium claim, recite
similar hardware components.
With respect to the claimed hardware components, Appellants'
Specification discloses the following:
Many of the information handling systems include nonvolatile
data stores, such as hard drives and/or nonvolatile memory.
Some of the information handling systems shown in FIG. 1
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depicts separate nonvolatile data stores (server 160 utilizes
nonvolatile data store 165, and mainframe computer 170
utilizes nonvolatile data store 17 5. The nonvolatile data store
can be a component that is external to the various information
handling systems or can be internal to one of the information
handling systems.
(Spec. ,r 19 .)
Figure 1 depicts a schematic diagram of one illustrative
embodiment of a question/answer creation (QA) system 100 in
a computer network 102. Knowledge manager ... may include
a computing device 104 ( comprising one or more processors
and one or more memories, and potentially any other
computing device elements generally known in the art
including buses, storage devices, communication interfaces, and
the like) connected to the computer network 102.
(Spec. ,r 13.)
Knowledge manager 100 may be configured to receive inputs
from various sources. For example, knowledge manager 100
may receive input from the network 102, a corpus of electronic
documents 106 or other data, a content creator 108, content
users, and other possible sources of input. In one embodiment,
some or all of the inputs to knowledge manager 100 may be
routed through the network 102. The various computing
devices 104 on the network 102 may include access points for
content creators and content users.
(Spec. ,r 14.)
Using engine 300, QA system 100 will digest real time feeds
from sources, such as social media websites 310 ....
(Spec. ,r 26.)
The generalized functional terms by which the computer components
are described reasonably indicate that Appellants' Specification discloses:
(i) conventional data stores (e.g., hard drives or nonvolatile memory); (ii)
conventional question/answer creation (QA) system 100, including
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knowledge manager 104 having computing device 104; and (iii) a
conventional social media website 310, which is displayed on a computing
device.
In view of Appellants' Specification, the claimed hardware
components, including "a computer-readable data store," "QA computer
system," and "feeds from social media" reasonably may be determined to be
generic, purely conventional computer elements. Thus, the claims do no
more than require generic computer elements to perform generic computer
functions at a high level of generality, rather than improve computer
capabilities.
Appellants argue that the "claims do not seek to tie up the entire
subject matter area of QA computer systems, or the use of adjusting
terminology values in QA computer systems" and "Appellant does not
attempt to restrict others from practicing every conceivable method of
adjusting terminology values in QA computer systems." (Reply Br. 4.)
However, 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). Where claims are deemed to recite only patent ineligible subject
matter under the two-step Alice analysis, as they are here, "preemption
concerns are fully addressed and made moot." Id.
Thus, we agree with the Examiner that claims 1, 8, and 15 do not
provide an inventive concept or subject matter that is unconventional.
Accordingly, we sustain the rejection of independent claims 1, 8, and
15 under 35 U.S.C. § 101. Claims 2, 5, 6, 9, 12, 13, 16, 19, and 20 depend
from independent claims 1, 8, and 15. We sustain the rejection of claims 2,
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5, 6, 9, 12, 13, 16, 19, and 20 under 35 U.S.C. § 101 argued together and for
the same reasons discussed with respect to independent claims 1, 8, and 15.
(App. Br. 14).
DECISION
The Examiner's decision rejecting claims 1, 2, 5, 6, 8, 9, 13, 15, 16,
19, and 20 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)(l )(iv).
AFFIRMED
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