Ex Parte KROHNER et al

Patent Trials and Appeals Board

Jun 18, 2019

14660289 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/660,289 03/17/2015
48980 7590 06/20/2019
YOUNG BASILE
3001 WEST BIG BEA VER ROAD
SUITE 624
TROY, MI 48084
FIRST NAMED INVENTOR
ERIC KROHNER
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.
LGSV-102-C 1241
EXAMINER
HONG, THOMAS J
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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):
docketing@youngbasile.com
audit@youngbasile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC KROHNER, CHRIS CUNNINGHAM,
RICHARD STUHLSATZ, and MATTHEW LEESE
Appeal2018-001972
Application 14/660,289
Technology Center 3700
Before LINDA E. HORNER, BRANDON J. WARNER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Non-Final Office Action (Aug. 22, 2016, "Non-Final Act.")
rejecting claims 1-12. 2 We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons explained below, we are not informed of error in the
rejection. Accordingly, we AFFIRM. We designate our affirmance a NEW
GROUND of rejection under 37 C.F.R. § 41.50(b).
1 Appellant is the Applicant, Logi-Serve, LLC, identified in the Appeal Brief
as the real party in interest. Br. 3.
2 In accordance with§ 134(a), Appellant's claims have been twice rejected.
Appeal2018-001972
Application 14/660,289
Claimed Subject Matter
The claimed subject matter relates to assessment testing for a
prospective employee's ability to provide customer service. Spec. ,r,r 34--35.
Claims 1, 9, and 11 are independent. Claim 1, reproduced below ( with
bracketed numbering of steps added), illustrates the claimed subject matter.
1. A method comprising:
[ 1] storing, at a server, a library of predefined graphical
elements;
[2] storing, at the server, information defining a plurality
of placement zones for use in image compositing;
[3] receiving at the server, one or more custom graphical
elements that are associated with a specified employer;
[ 4] receiving, at the server, selections that identify a group
of selected graphical elements, the group of selected graphical
elements including one or more of the predefined graphical
elements and one or more of the custom graphical elements,
wherein each graphical element from the group of graphical
elements is associated with a respective placement zone from the
plurality of placement zones;
[ 5] generating, at the server, a composite image including
each graphical element from the group of graphical elements,
with each graphical element from the group of graphical
elements being positioned according to its respective placement
zone;
[ 6] storing the composite image at the server;
[7] displaying on a computer monitor a first interface
screen that includes text identifying a plurality of attributes
previously associated with a capability and a first plurality of
input controls that are each associated with a respective attribute
from the plurality of attributes;
[8] accepting a first input that represents, for each of the
plurality of attributes, an assessment by an individual of a
relative importance of the attribute to the capability, wherein the
assessment comprises an assessment of attributes that an ideal
candidate possesses for the capability, wherein the first input
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includes a quantitative first input component received using a
respective input control from the first plurality of input controls
for each attribute from the plurality of attributes;
[9] subsequent to accepting the first input, presenting at
the computer monitor an intervening activity for completion by
the individual, wherein the intervening activity includes
displaying on the computer monitor a scenario that includes the
composite image, displaying on the computer monitor at least
one question regarding the scenario, and requesting from the
individual at least one input responsive to the at least one
question regarding the scenario;
[ 1 OJ determining that the intervening activity has been
completed upon receiving from the individual the at least one
input responsive to the at least one question regarding the
scenano;
[ 11] subsequent to determining that the intervening
activity has been completed, displaying on the computer monitor
a second interface screen that includes text identifying the
plurality of attributes previously associated with the capability in
the context of a self-evaluation exercise regarding each of the
plurality of attributes previously associated with the capability
and a second plurality of input controls that are each associated
with a respective attribute from the plurality of attributes;
[ 12] accepting a fourth input that represents a self-
assessment by the individual regarding each of the plurality of
attributes previously associated with the capability, wherein the
fourth input includes a quantitative fourth input component
received using a respective input control from the second
plurality of input controls for each attribute from the plurality of
attributes; and
[13] generating as output a score indicative of the
capability based on at least the first input and the fourth input.
Br. 23-24 (Claims Appendix).
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Rejection
Claims 1-12 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Non-Final Act. 2-8.
DISCUSSION
Appellant presents arguments specific to independent claims 1, 9, and
11. Br. 16-21. We address claim 1 first, and then consider the extent to
which arguments relating to claims 9 and 11 raise additional issues. The
dependent claims are not argued separately, and we decide the appeal on the
basis of representative claims 1, 9, and 11. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 1-8
The Examiner determines claim 1 is "directed to the abstract idea of
competency assessment for evaluating at least one capacity for job
interviews." Non-Final Act. 2. The Examiner explains that the claimed
concepts correspond to abstract ideas identified by the Federal Circuit, "such
as diagnosing an abnormal condition by performing tests and thinking about
the results in [In re Grams, 888 F.2d 835 (Fed. Cir. 1989)] as all of these
concepts relate to diagnosing states of human by performing a series of
testing" and "the concept of comparing new and stored information and
using rules to identify options in [ SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014) (non-precedential)]
because these concepts relate to comparing data with pre-existing data, and
calculating an output under certain rules." Non-Final Act. 5. The Examiner
also determines the claim does not include additional elements that are
significantly more than the judicial exception. Id. at 6.
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Appellant argues the Examiner's "determination ignores the character
of the claims as a whole and is made at a high level of abstraction that fails
to consider the actual content of the claims." Br. 12-13. Appellant contends
the "claims are not directed a mathematical algorithm" as in In re Grams,
and also argues SmartGene is distinguishable because Appellant's "claims
are not directed to routinely-performed mental processes." Br. 15.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
Nonetheless, the Supreme Court has long interpreted§ 101 to include
implicit exceptions: "Laws 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) (internal quotation omitted).
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.").
In Diamond v. Diehr, 450 U.S. 175 (1981), 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." 450 U.S. at 176; see also id. at 191
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("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 Gottschalkv. Benson, 409 U.S. 63 (1972); Parker
v. Flook, 437 U.S. 584 (1978)). The Court also indicated, however, that "an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection." Id. at 187.
If the claim is "directed to" an abstract idea, we then 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 (additional 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. ( alterations in original) ( 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 USPTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Revised Step 2A
includes two prongs:
Prong One: Evaluate whether the claim recites a judicial exception,
i.e., a law of nature, a natural phenomenon, or subject matter within the
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groupings of abstract ideas enumerated in the Revised Guidance (i.e.,
mathematical concepts, certain methods of organizing human activity, and
mental processes); and
Prong Two: Evaluate whether the claim recites additional elements
that integrate the judicial exception into a practical application (see, e.g.,
MPEP § 2106.0S(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 consider Step
2B of the Revised Guidance, in which we look to whether the claim:
(a) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
(b) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Revised Guidance.
Claim 1 recites a process, one of the four statutory categories of
invention in 35 U.S.C. § 101. At Prong One of Step 2A of the Revised
Guidance, we evaluate whether the claim recites a judicial exception.
But for the recitation of general computer components and functions
in claim 1, each of the thirteen steps of the method encompasses activities
that may be performed by a human in the mind or with pen and paper. Steps
[ 1] and [2] of claim 1 ( as identified with bracketed numbering in the claim
reproduced above) cover "storing ... predefined graphical elements" and "a
plurality of placement zones" in the mind or on paper, but for reciting that
the storing is "at [a] server." Step [3], but for reciting "at the server,"
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similarly covers "receiving ... one or more custom graphical elements that
are associated with a specified employer," effectively adding the custom
graphical elements to the collection of graphical elements being stored,
which can be done in the mind or on paper. Step [ 4] encompasses
"receiving ... selections that identify a group of selected graphical elements
... including one or more of the predefined graphical elements and one or
more of the custom graphical elements" and associating each graphical
element "with a respective placement zone from the plurality of placement
zones." Selecting the elements and associating them with a placement zone
may be done in the mind or with pen and paper, but for the recitation of
receiving the selections "at the server." Step [5] covers "generating ... a
composite image including each graphical element from the group of
graphical elements, with each graphical element from the group of graphical
elements being positioned according to its respective placement zone,"
which may also be done in the mind or on paper, but for the limitation of the
image being generated "at the server." Step [ 6] requires "storing the
composite image," which could also be done in the mind or on paper, but for
the limitation reciting the step is done "at the server." Step [7] recites
"displaying on a computer monitor a first interface screen that includes text
identifying a plurality of attributes previously associated with a capability
and a first plurality of input controls that are each associated with a
respective attribute from the plurality of attributes." To the extent step [7]
requires planning the content to be displayed, such planning may be
performed by a human in the mind. Step [8] involves "accepting a first
input," where the input "includes a quantitative first input component
received using a respective input control," and the claim identifies what is
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represented by the quantitative input. In particular, "for each of the plurality
of attributes" displayed in step [7], the input represents "an assessment by an
individual of a relative importance of the attribute to the capability, wherein
the assessment comprises an assessment of attributes that an ideal candidate
possesses for the capability." The recited "assessment by an individual" is
generated in the human mind. In step [9], "subsequent to accepting the first
input," "an intervening activity" is presented at the computer monitor "for
completion by the individual," and the intervening activity includes
"displaying ... a scenario that includes the composite image," "displaying
... at least one question regarding the scenario," and "requesting from the
individual at least one input responsive to the at least one question regarding
the scenario." Like step [7], to the extent step [9] requires planning the
content to be displayed, such planning may be performed by a human in the
mind. Step [10] recites "determining that the intervening activity has been
completed upon receiving from the individual the at least one input
responsive to the at least one question regarding the scenario," which may be
performed entirely in the human mind. In step [ 11], "subsequent to
determining that the intervening activity has been completed," "a second
interface screen" is displayed on the computer monitor, and the interface
screen "includes text identifying the plurality of attributes previously
associated with the capability in the context of a self-evaluation exercise
regarding each of the plurality of attributes previously associated with the
capability and a second plurality of input controls that are each associated
with a respective attribute from the plurality of attributes." To the extent
step [ 11] requires planning the content to be displayed, such planning may
be performed by a human in the mind. Step [ 12] recites "accepting a fourth
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input that represents a self-assessment by the individual regarding each of
the plurality of attributes previously associated with the capability, wherein
the fourth input includes a quantitative fourth input component received
using a respective input control from the second plurality of input controls
for each attribute from the plurality of attributes." As with step [8], the
recited "self-assessment by the individual" is generated in the human mind.
Step [13] recites "generating as output a score indicative of the capability
based on at least the first input and the fourth input," which encompasses
generating such score in the mind or using pen and paper.
Thus, other than reciting storing, receiving, or generating "at [a]
server," displaying an image, text, or input controls on a computer monitor,
and receiving input using the input controls, each step of claim 1 may be
performed in the human mind or by a human using pen and paper. Steps
that may be performed in the mind, even if recited as being performed on a
computer, are mental processes. See Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (noting, in holding
that the claim recites an abstract idea, that "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"); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F .3d.
1314, 1324 (Fed. Cir. 2016) (holding that a computer-implemented method
for "anonymous loan shopping" was an abstract idea because it could be
"performed by humans without a computer"); Versata Dev. Grp. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) ("Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
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or in a person's mind."); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of
"computer" or "computer readable medium" does not make a claim
otherwise directed to process that "can be performed in the human mind, or
by a human using a pen and paper" patent eligible). In addition, Intellectual
Ventures, Mortgage Grader, Versata, and CyberSource do not hold that only
routinely-performed mental processes are abstract ideas. Accordingly, we
conclude that claim 1 recites mental processes, which is one of the groupings
identified in the Revised Guidance, and thus recites an abstract idea.
To determine whether claim 1 is "directed to" an abstract idea, we
proceed to Prong Two of Step 2A of the Revised Guidance, and consider
whether the claim recites additional elements that integrate the judicial
exception into a practical application. As noted above, in addition to mental
process steps that may be performed in the mind or with pen and paper,steps
[ 1 ]-[ 6] recite a "server" that stores, receives, and generates the elements
identified above. Steps [7]-[9], [11 ], and [12] recite displaying text or
images on a computer monitor and receiving input through input controls.
The server, monitor, and input controls are recited at a high level of
generality, i.e., as generic computer elements performing generic computer
functions of storing data, displaying or generating text or images, and
receiving input. Consistent with the claim, the Specification states that the
described systems "can be implemented in the form of software suitable for
performing the processes detailed herein that is executed by a separate
conventional computer." Spec. ,r 101. The generic computer limitations
recited in claim 1 are no more than mere instructions to apply the mental
processes using generic computer components. The claim, when considered
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as a whole, does not recite improvements to technology or computer
functionality. Accordingly, these additional elements do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea. Thus, claim 1 is directed
to an abstract idea.
Appellant argues claim 1 addresses "at least two significant
technological improvements." Br. 16. The first alleged technological
improvement, relating to steps [1], [3], [4], [5], and [9] of claim 1, is
identified as "improvements to the efficiency of creation and storage of
assets, such as the composite image of claim 1, that improve customization,
deployment, and performance of a computer-implemented assessment." Br.
17. Storing predefined graphical elements, receiving custom graphical
elements, receiving selections that identify selected graphical elements, and
generating a composite image including these graphical elements in certain
placement zones, however, does not improve the functioning of the
computer itself as was the case in Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016). Rather, the computer here is being employed as a
tool for presenting an assessment that may be constructed in the human
mind.
Displaying a composite image as part of an "intervening activity" also
does not indicate claim 1 is directed to a technological improvement like that
at issue in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d
1299 (Fed. Cir. 2016). The claim in that case "focused on a specific asserted
improvement in computer animation, i.e., the automatic use of rules of a
particular type." Id. at 1314. Here, although claim 1 requires generating a
composite image that includes selected predefined and custom graphical
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elements, and does not merely claim the function of presenting an image to
be used in the claimed "intervening activity," selecting predefined and
custom graphical elements to build a composite image to be used in an
assessment scenario would facilitate preparing the assessment to be
presented through media other than a computer. This indicates that claim 1
is not directed to overcoming a potential technological problem of how to
present an assessment on computer, but instead is related to the idea of the
assessment itself and uses the computer merely as a tool to present it.
The second alleged technological improvement, related to the
interface screens, inputs, and intervening activity in steps [7] through [12] of
claim 1, is identified by Appellant as "an improvement in the field of
computer-implemented assessment technology by addressing a computer's
inherent inability to assess whether a human user is providing a truthful
response." Br. 18. "In particular," argues Appellant, "the 'intervening
activity' reduces the likelihood that the individual will respond to the self-
evaluation exercise of the second interface screen with answers that
correspond to those given in response to the first interface screen, as
described in paragraph 58 of Applicant's specification." Id. Again,
Appellant's explanation of the alleged technological improvement is not
limited to the computer environment because the intervening activity would
serve a similar purpose in an assessment presented through other media,
which belies the assertion that claim 1 is directed to a technological
improvement.
In this case, the same analysis applies in Step 2B of the Revised
Guidance as in Step 2A, Prong Two. Mere instructions to apply an
exception using generic computer components cannot integrate a judicial
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exception into a practical application at Step 2A, or provide an inventive
concept at Step 2B. As noted supra, Appellant argues its "claims are not
directed to routinely-performed mental processes." Br. 15. But whether the
mental processes are routinely performed does not inform whether the
claims recite "other elements or a combination of elements, sometimes
referred to as an 'inventive concept,' sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself," as required by Mayo, Alice, and the Revised Guidance.
Mayo, 566 U.S. at 72-73 (emphasis added); Revised Guidance, 84 Fed. Reg.
50 n.24 ("USPTO guidance uses the term 'additional elements' to refer to
claim features, limitations, and/ or steps that are recited in the claim beyond
the identified judicial exception."); see also BSG Tech LLC v. Buyseasons,
Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018) ("At Alice step two, it is
irrelevant whether considering historical usage information while inputting
data may have been non-routine or unconventional as a factual matter. As a
matter of law, narrowing or reformulating an abstract idea does not add
'significantly more' to it.").
Appellant similarly contends that the claim limitations relating to the
alleged technological improvements discussed supra show "the claim
includes specific limitations that are not routine, conventional activities in
the field." Br. 18. As discussed above, however, the limitations encompass
only mental processes and generic computer components and functions.
Appellant does not identify other, non-abstract features of the claimed
invention that, alone or in combination, are not well-understood, routine and
conventional computer hardware and functions. Accordingly, we are not
informed of error in the Examiner's rejection of representative claim 1 under
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35 U.S.C. § 101 as being directed to patent-ineligible subject matter, and we
sustain the rejection. For the same reasons, we sustain the rejection of
dependent claims 2-8, which are rejected on the same ground and not argued
separately. Because our reasoning differs in some respects from that given
by the Examiner, we designate our affirmance of the rejection of claims 1-8
a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b).
Claims 9 and 10
Claim 9 is directed to an apparatus with one or more processors that
perform steps similar to several of the steps recited in claim 1. We note that
claim 9 does not recite generating a composite image from predefined and
custom graphical elements as in claim 1, but instead recites "displaying on
the computer monitor a scenario that includes a graphical representation of a
customer-service interaction." Appellant argues claim 9 "relate[s] to a
significant technological improvement that addresses a computer's inherent
inability to assess whether a human user is providing a truthful response."
Br. 18-19. As argued in support of claim 1, Appellant contends the
"intervening activity" recited in claim 9 "reduces the likelihood that the
individual will respond to the self-evaluation exercise of the second interface
screen with answers that correspond to those given in response to the first
interface screen." Br. 19. We disagree, for the reasons explained in relation
to claim 1. Thus, we sustain the rejection of claims 9 and 10 under
35 U.S.C. § 101, and designate our affirmance of the rejection of claims 9
and 10 a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b).
Claims 11 and 12
Claim 11 recites (with numbering of steps added):
A method, comprising:
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[ 1] displaying on a computer monitor a first interface
screen that includes a graphical representation of a customer-
service interaction between a service provider and a customer of
a specified employer, text describing a plurality of alternative
actions that could be taken by an individual during the customer-
service interaction, and a first plurality of input controls that are
each associated with a respective alternative action from the
plurality of alternative actions;
[2] accepting a first input that represents a likelihood that
the individual would perform each of the plurality of alternative
actions, the first input including a respective quantitative score
received using a respective input control from the first plurality
of input controls for each alternative action;
[3] identifying one of the alternative actions from the
plurality of alternative actions as a selected action based on the
first input;
[ 4] displaying on the computer monitor a second interface
screen that includes a plurality of graphic images each depicting
a respective potential reaction from a plurality of potential
reaction by the customer to the selected action and a second
plurality of input controls that are each associated with a
respective one of the plurality of potential reactions;
[ 5] accepting a second input that represents an assessment
by the individual of a likelihood that the customer would react in
the manner depicted with respect to each respective potential
reaction, the second input including a respective quantitative
score received using a respective input control from the second
plurality of input controls for each respective potential reaction;
and
[6] generating as output a score indicative of the capability
based on the first input and the second input.
Br. 28 (Claims Appendix). Claim 11 is rejected on the same basis as claims
1 and 9. Non-Final Act. 4--7.
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Claim 11 recites a process, one of the four statutory categories of
invention in 35 U.S.C. § 101. At Prong One of Step 2A of the Revised
Guidance, we evaluate whether the claim recites a judicial exception.
But for the recitation of computer components and functions in claim
11, each of the six steps of the method encompass activities that may be
performed by a human in the mind or with pen and paper. Step [ 1] recites
displaying on a computer monitor a first interface screen that
includes a graphical representation of a customer-service
interaction between a service provider and a customer of a
specified employer, text describing a plurality of alternative
actions that could be taken by an individual during the customer-
service interaction, and a first plurality of input controls that are
each associated with a respective alternative action from the
plurality of alternative actions.
To the extent step [1] requires planning the content to be displayed, such
planning may be performed by a human in the mind. Step [2] involves
"accepting a first input," where the input "include[s] a respective
quantitative score received using a respective input control," and the input
"represents a likelihood that the individual would perform each of the
plurality of alternative actions." The "quantitative score[s]" recited in step
[2] are encompassed by scores generated in the mind of the "individual"
recited in step [ 1]. Step [3] recites "identifying one of the alternative actions
from the plurality of alternative actions as a selected action based on the first
input," which may be performed entirely in the human mind. Step [ 4]
recites
displaying on the computer monitor a second interface screen
that includes a plurality of graphic images each depicting a
respective potential reaction from a plurality of potential reaction
by the customer to the selected action and a second plurality of
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input controls that are each associated with a respective one of
the plurality of potential reactions.
Similar to step [1], to the extent step [4] requires planning the content to be
displayed, such planning may be performed by a human in the mind. Step
[5] involves "accepting a second input," where the input "include[s] a
respective quantitative score received using a respective input control," and
the input "represents an assessment by the individual of a likelihood that the
customer would react in the manner depicted with respect to each respective
potential reaction." The "quantitative score[s]" recited in step [5] are
encompassed by scores generated in the mind of the individual recited in the
step. Step [6] recites "generating as output a score indicative of the
capability based on the first input and the second input," which may be
performed entirely in the human mind.
Thus, other than reciting display of images, text, or input controls on a
computer monitor" and accepting input through input controls, each step of
claim 11 may be performed in the human mind or by a human using pen and
paper. For the same reasons discussed above for claim 1, we conclude that
claim 11 recites mental processes, which is one of the groupings identified in
the Revised Guidance, and thus recites an abstract idea.
To determine whether claim 11 is "directed to" an abstract idea, we
proceed to Prong Two of Step 2A of the Revised Guidance, and consider
whether the claim recites additional elements that integrate the judicial
exception into a practical application. As noted above, in addition to mental
process steps that may be performed in the mind or with pen and paper,
claim 11 recites displaying images, text, or input controls on a computer
monitor" and accepting input using input controls. The monitor and input
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controls are recited at a high level of generality, i.e., as generic computer
elements performing generic computer functions of displaying text or
images and receiving input. Consistent with the claim, the Specification
states that the described systems "can be implemented in the form of
software suitable for performing the processes detailed herein that is
executed by a separate conventional computer." Spec. ,r 101. The generic
computer limitations recited in claim 11 are no more than mere instructions
to apply the mental processes using generic computer components. The
claim, when considered as a whole, does not recite improvements to
technology or computer functionality. Accordingly, these additional
elements do not integrate the abstract idea into a practical application
because they do not impose any meaningful limits on practicing the abstract
idea. Thus, claim 11 is directed to an abstract idea.
Appellant argues:
The Office Action's characterization of the claim 11 as directed
to "competency assessment for evaluating at least one capacity
for job interviews" ignores features of claim 11 that enable
assessment of the ability of the user of the candidate system to
make appropriate judgments in service situations, and to
understand the likely effect of his or her actions in those
situations.
Br. 20. Appellant contends the claimed features "are improvements in
computer-implemented assessment technology" because, "[a]s opposed to
being simple computer implementation of assessment techniques, the
features included in claim 11 enhance assessment by facilitating dynamic
interaction and feedback." Br. 20-21.
We have addressed all elements of claim 11 in considering whether it
is directed to an abstract idea. As to dynamic interaction and feedback,
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Appellant does not explain how this is necessarily rooted in or improves
"computer-implemented assessment technology." Any assessment will
typically involve interaction and feedback. See, e.g., Spec. ,r 4 ("For
example, during a typical hiring process, a job candidate is interviewed to
determine whether the candidate would be able to competently perform the
duties associated with the position."), ,r 6 ("Assessment testing has long
been used as a tool for screening potential job candidates. Often, however,
these tests are overly complex, lengthy, and fail to fully engage the
candidate, which leads to test-taking fatigue, disinterest, and drop-off.").
Here, the computer elements are merely being employed as tools to present
the assessment on computer, and do not integrate the abstract idea into a
practical application.
In this case, the same analysis applies in Step 2B of the Revised
Guidance as in Step 2A, Prong Two. Mere instructions to apply an
exception using generic computer components cannot integrate a judicial
exception into a practical application at Step 2A, or provide an inventive
concept at Step 2B. For the same reasons as claim 1, Appellant's contention
that the "claims are not directed to routinely-performed mental processes,"
Br. 15, and that claim 11 "include[s] significant additional features that
render the claims patent eligible," Br. 21, does not identify other, non-
abstract features of the claimed invention that, alone or in combination, are
not well-understood, routine and conventional computer hardware and
functions.
Accordingly, we are not informed of error in the Examiner's rejection
of representative claim 11 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter, and we sustain the rejection. For the same reasons,
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Application 14/660,289
we sustain the rejection of dependent claim 12, which is rejected on the
same ground and not argued separately. Because our reasoning differs in
some respects from that given by the Examiner, we designate our affirmance
of the rejection of claims 11 and 12 a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b).
DECISION
We affirm the Examiner's decision to reject claims 1-12 under
35 U.S.C. § 101. We designate our affirmance a new ground of rejection
under 37 C.F.R. § 4I.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). "A new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review." 37 C.F.R. § 4I.50(b).
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
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Application 14/660,289
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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; 37 C.F.R. § 4I.50(b)
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