Ex Parte Sekhar

Patent Trial and Appeal Board

Sep 22, 2017

11366517 (P.T.A.B. Sep. 22, 2017)

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
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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).
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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.
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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
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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.”
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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).
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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.
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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.
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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
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