Ex Parte SekharDownload PDFPatent Trial and Appeal BoardSep 22, 201711366517 (P.T.A.B. Sep. 22, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/366,517 03/02/2006 Vivek Sekhar CA920050061US1 4308 30449 7590 09/26/2017 SCHMEISER, OLSEN & WATTS 22 CENTURY HILL DRIVE SUITE 302 LATHAM, NY 12110 EXAMINER CARLOS, ALVIN LEABRES ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 09/26/2017 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): 30449@IPLAWUSA.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VIVEK SEKHAR Appeal 2016-007548 Application 11/366,517 Technology Center 3700 Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and PAUL J. KORNICZKY, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Vivek Sekhar (Appellant)1 seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection2 of claims 7, 33, 40, and 46-48 under 35 U.S.C. § 101 in which the Examiner states that the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is International Business Machines Corporation. Appeal Br. 1. 2 Appeal is taken from the adverse decision of the Examiner as set forth in the Final Office Action, dated May 18, 2015 (“Final Act.”). 3 Claims 1—6, 8—32, 34—39, 41—45 and 49-51 are cancelled. Appeal Br. 1. Appeal 2016-007548 Application 11/366,517 CLAIMED SUBJECT MATTER Claims 7, 33, and 40 are independent. Claim 7, reproduced below, illustrates the claimed subject matter. 7. A method of aggregating opinions on a plurality of questions from a plurality of participants, said method comprising: a processor of a data processing system presenting, to each participant of the plurality of participants, questions and an identification of an idea associated with each question such that each question directs each participant to select a category of a specified plurality of categories for placement of the identified idea, said questions provided to each participant being selected from the plurality of questions; said processor receiving, for each question from each participant, a selection, from the plurality of categories, of the category into which each participant has placed the identified idea associated with each question, said plurality of categories comprising said selected categories; said processor calculating a percentage vote for each selected category of each idea, said calculated percentage vote for each selected category of each idea being the percent of participants that selected each category of each idea; said processor selecting a winning category for each idea, based on the calculated percentage vote for each selected category of each idea; said processor determining a next idea consisting of the idea having the lowest calculated percentage vote of the ideas winning category; and said processor determining a next question associated with the next idea having the lowest calculated percentage vote of the ideas winning category and in response, presenting, to a new participant not comprised by the plurality of participants, the next question and an identification of the next idea such that the next question directs the next participant to select a next category of the plurality of categories for placement of the next idea and in response, receiving the new participant selection, from the 2 Appeal 2016-007548 Application 11/366,517 plurality of categories, of the category into which new participant has placed the next idea. ANALYSIS Rejection of Claims 7, 33, 40, and 46—48 as being directed to non- statutory subject matter Appellant argues the claims subject to this rejection as a group. Appeal Br. 7—18; Reply Br. 2—11. We select claim 7 as representative, with the remaining claims standing or falling with claim 7. 37 C.F.R. § 41.37(c)(1)(iv) (2014). A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. See Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted). 3 Appeal 2016-007548 Application 11/366,517 In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 134 S. Ct. at 2355. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297). In Gottschalkthe Court, citing O’Reilly v. Morse (56 U.S. 65 (1853)), cautioned that a claim “so abstract and sweeping as to cover both known and unknown uses” is not directed to patent-eligible subject matter under 35 U.S.C. § 101. Gottschalk, 409 U.S. at 68. In Alice, the Supreme Court reaffirmed this principle: We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable. We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. We have described the concern that drives this exclusionary principle as one of pre-emption. Laws of nature, natural phenomena, and abstract ideas are the basic tools of scientific and technological work. [Monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it, thereby thwarting the primary object of the patent laws. We have repeatedly emphasized this ... concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. 4 Appeal 2016-007548 Application 11/366,517 Alice, 134 S. Ct. at 2354 (quotations and citations omitted). Regarding the first step in the Alice framework, the Examiner finds claims 7, 33, and 40 “are directed to a system and method for aggregating opinions from a plurality of participants including categorizing and ranking the aggregated opinions,” that “are drawn to the abstract idea of a method of organizing human activities.” Final Act. 2, 4. Regarding Alice’s second step, the Examiner summarizes the recited features and determines that “other than the abstract idea per se,” the features “amount to no more than recitation of generic data manipulation and processing steps that serves to perform generic computer functions of collecting data, recognizing certain data within the collected data set, categorizing and ranking the collected data and storing that recognized data in a memory are directed to data collection and manipulation.” Id. at 2—3. Furthermore, the Examiner explains that “[t]he longstanding concept of data collection, recognizing certain data within the collected data set, categorizing and ranking the collected data and storing that recognized data in a memory is undisputedly well-known, and directed to conventional data management and data processing that are typically done by a generic computer.” Id. at 3. The Examiner concludes “the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.” Id. (citing Alice, 134 S. Ct. at 2347). Appellant responds that “aggregating opinions on a plurality of questions from a plurality of participants including categorizing and ranking the aggregated opinions does not organize human activities in claims 7, 33 and 40,” but “even if aggregating the opinion data and ranking the data does organize human activities, aggregating the opinion data and ranking the data 5 Appeal 2016-007548 Application 11/366,517 are not a type of human activity that is an abstract idea.” Appeal Br. 9. Appellant further seek to distinguish the recited claims from prior case law contending that “the activity of aggregating the opinion data and ranking the data is significantly outside the scope of. . . transactions between providers and consumers of a commodity, and between market participants and the commodity provider, to balance risk.”4 Appeal Br. 10 (citing to Bilski v. Kappas, 561 U.S. 593 (2010)). However, in analyzing analogous claims under the first step of the Alice test, the Federal Circuit explained in Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343 (Fed. Cir. 2014), that the claims at issue were directed to the “abstract idea of (1) collecting data, (2) recognizing certain data within the collected data set, and (3) storing that recognized data in a memory.” Id. at 1347. In addition, the Federal Circuit explained that “[t]he concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.” Id. at 1347. Like in Content Extraction, the features of claims 7,33, and 40 are well known and are routinely performed by humans. Further, nothing in claims 7, 33, and 40 requires more than computer implementation of well- understood, routine data processing techniques. Thus, we agree with the Examiner that the claims are directed to the abstract idea “of organizing and categorizing collected data,” and “of comparing new and stored information and using rules to identify options.” Ans. 5. 4 Appellant does not explain how presenting questions to a plurality of participants, as recited by the claims, is not “human activity.” 6 Appeal 2016-007548 Application 11/366,517 Furthermore, as the Examiner explains, “[t]he longstanding concept of data collection, recognizing certain data within the collected data set, categorizing and ranking the collected data and storing that recognized data in a memory is undisputedly well-known, and directed to conventional data management and data processing that are typically done by a generic computer,” and that “application of the processor is directed to conventional computing devices that do not add significantly more to the abstract idea.” Id. Appellant next contends that “even if the claims are directed to an abstract idea, the claims recite significantly more that the abstract idea” as “the claims add a specific limitation that is not well-understood, routine and conventional in the field of aggregating opinion data and ranking the data.” Appeal Br. 11. More specifically, Appellant points to several recited limitations of independent claims 7, 33, and 40 that are alleged to “collectively specify a process for determining a next question to be presented to a new participant. . . which is not well-understood, routine and conventional in the field of aggregating opinions from a plurality of participants.” Id. at 12. However, Appellant has provided no evidence to support this contention.5 We are instructed that “[ajttorney’s arguments in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citation omitted); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding that lawyer arguments and conclusory 5 At page 13 of the Appeal Brief, Appellant appears to attempt to support this contention by relying on statements by the Examiner in a withdrawn Notice of Allowance mailed July 9, 2014. See also Ans. 6. However, in an appeal under 35 U.S.C. § 134(a), it is the Examiner’s final rejection that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990). 7 Appeal 2016-007548 Application 11/366,517 statements that are unsupported by factual evidence are entitled to little probative value). Furthermore, the Examiner points out that “judicial exceptions need not be old or long—prevalent, and that even newly discovered judicial exceptions can still be exceptions, despite their novelty.” Ans. 6. Appellant’s final contention is that claims 7, 33, and 40 are patentable because they “do not pre-empt significant inventive activity in the field of aggregating opinion data and ranking data.” Appeal Br. 14. More specifically, Appellant again sets forth the previously recited claim limitations, and reasons that those limitations sufficiently narrow the scope of the claims 7, 33 and 40 to ensure that claims 7,33 and 40 do not preclude inventive activity in the field of aggregating opinion data and ranking the data, by not precluding the invention and use of other effective inventive techniques for aggregating opinion data and ranking the data. Id. at 17—18. This argument is not persuasive. Although the Alice Court discussed the pre-emption of abstract ideas as a basis to exclude them from patent eligibility under Section 101, Alice, 134 S.Ct. at 2354, the Court did not make a pre-emption analysis a prerequisite to determining patent ineligibility. Nevertheless, even considering pre-emptive issues in this case, we do not agree that the claims pose no risk of preemption of an abstract idea. Appellant does not explain how the claims would “not pre-empt significant inventive activity in the field of aggregating opinion data and ranking data,” so that they would not constitute preemption of that abstract idea. Thus, Appellant has provided no evidence to support this contention. See In re De Blauwe, 736 F. 2d at 705. 8 Appeal 2016-007548 Application 11/366,517 In the Reply Brief, Appellant states that “the Federal Circuit in Enfish6 asserts that an inquiry as to what a claim involves is not germane to an abstract idea analysis, and that the correct legal test is whether the claim as a whole is directed to an abstract idea.” Reply Br. 5. Appellant then alleges that “[t]he Examiner’s Answer does not present analysis to show that claims 7, 33 and 40 as a whole are directed to ‘comparing new and stored information and using rules to identity options,’” but that “the Examiner’s Answer merely alleges that claims 7, 33 and 40 involve ‘comparing new and stored information and using rules to identify options", by alleging that categorizing and ranking the aggregated opinions in claims 7,33 and 40 implies comparing new and stored information and using rules to identify options.”7 Id. Furthermore, Appellant contends the Examiner’s allegation in the Answer “that claims 7, 33 and 40 are directed to ‘the abstract idea of organizing and categorizing collected data’ is a new argument that was not presented in the final office action dated 05/18/20.”8 Id. However, we find Appellant’s allegation to be without merit as the Examiner’s Final Action and Answer are replete with explanations that Appellant’s claims are “directed to” an abstract idea. Based on the foregoing, we sustain the Examiner’s rejection of independent claims 7, 33, and 40 under 35 U.S.C. § 101 as being directed to 6 Enfish, LLC v. Microsoft Corp., Fed. Cir., No. 2015-1244, 5/12/2016 7 Although not controlling of our determinations, we are unable to find where the Examiner has used the word “involve” in the Answer. 8 We offer no opinion as to whether the Examiner’s position in the Answer constitutes a new ground of rejection as it is not properly before us. We deem Appellant, by the presentation of arguments in the Reply Brief in rebuttal to the Answer, to have waived any argument that the rejection must be designated a new ground. See Reply Br. 5—7. 9 Appeal 2016-007548 Application 11/366,517 non-statutory subject matter. Appellant does not provide any additional arguments for the patentability of claims 46-48. See Appeal Br. 7—18; Reply Br. 2—10. Accordingly, we also sustain the rejection of these claims under 35 U.S.C. § 101 as being directed to non-statutory subject matter. DECISION The Examiner’s § 101 rejection 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 10 Copy with citationCopy as parenthetical citation