International Business Machines Corporation

Patent Trials and Appeals Board

Jun 25, 2020

15263889 - (D) (P.T.A.B. Jun. 25, 2020)

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.
15/263,889 09/13/2016 Corville O. Allen SVL920160088US1 8365
45725 7590 06/25/2020
Walder Intellectual Property Law PC
445 Crestover Circle
Richardson, TX 75080
EXAMINER
BAKER, MATTHEW H
ART UNIT PAPER NUMBER
2659
MAIL DATE DELIVERY MODE
06/25/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte CORVILLE O. ALLEN, ROBERTO DELIMA,
AYSU EZEN CAN, and ROBERT C. SIZEMORE
________________

Appeal 2019-002768
Application 15/263,889
Technology Center 2600
________________

Before JOHN A. EVANS, JASON J. CHUNG, and
CARL L. SILVERMAN, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–8, 11–18, and 20–23.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, International Business Machines
Corporation is the real party in interest. Appeal Br. 2.
2 According to the claim listings filed on February 26, 2018, claims 9,10 and
19 are cancelled.
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INVENTION
The invention relates to providing a hybrid approach to handling
hypothetical statements in texts. Spec. ¶ 1. Claim 1 is illustrative of the
invention and is reproduced below:
1. A method, in a data processing system comprising
at least one processor and at least one memory, the at least one
memory comprising instructions which are executed by the at
least one processor and specifically configure the processor to
perform the method, wherein the method comprises:
receiving, by the data processing system, natural language
content;
analyzing, by the data processing system, the natural
language content to generate a parse tree data structure stored
in the at least one memory of the data processing, system;
processing, by the data processing system, the stored
parse tree data structure to identify one or more instances of
hypothetical spans in the natural language content represented
by the stored parse tree data structure, wherein hypothetical
spans are terms or phrases indicative of a hypothetical
statement; and
performing, by the data processing system, an operation
based on the natural language content and the identified one or
more instances of hypothetical spans in the natural language
content, wherein the operation is performed with portions of the
natural language content corresponding to the one or more
identified instances of hypothetical spans within portions of the
natural language content being given different relative weights
in a function performed by the operation than other portions of
the natural language content that do not have one or more
identified instances of hypothetical spans, wherein processing
the stored parse tree data structure further comprises:
processing the parse tree data structure to identity
instances of factual triggers, wherein factual triggers are terms
or phrases indicative of a factual statement;
determining if a factual sub-tree, associated with a factual
trigger, is present within a hypothetical sub-tree; and
in response to the factual sub-tree being present within a
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hypothetical sub-tree, removing the factual sub-tree from the
hypothetical sub-tree to generate a modified hypothetical sub-
tree prior to further processing of the modified hypothetical sub-
tree.
Appeal Br. 30–31 (Claims Appendix) (emphases added).

REJECTION
The Examiner rejects claims 1–8, 11–18, and 20–23 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter. Final Act. 3–4.3
ANALYSIS
A. Principles of Law
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include 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 Court’s two-part 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

3 Although the Examiner states claims 1–20 are rejected under 35 U.S.C.
§ 101, we construe this as a typographical error because claims 9, 10, and 19
are cancelled according to the claim listings filed on February 26, 2018.
We, therefore, refer to this rejection as claims 1–8, 11–18, and 20–23
rejected under 35 U.S.C. § 101.
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“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 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
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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 turn 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. (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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also Update at 1.
Under the 2019 Revised Guidance and the Update, we first look to
whether the claim recites:

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “Update”)
(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes that the claims recite an abstract idea, specifically
concepts performed in the human mind. Ans. 5; Final Act. 4. The Examiner

5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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also determines the present claims do not amount to significantly more than
an abstract idea itself because the abstract idea is implemented using
additional elements that are well-understood, routine, and conventional.
Ans. 4 (citing Spec. ¶¶ 33–34).
Appellant argues a human cannot perform the operations recited in the
present claims. Appeal Br. 22–23; Reply Br. 3–4. Appellant argues that the
present claims recite an improvement to the data processing system by
providing different weightings for hypothetical spans and specifically
modifying the hypothetical sub-tree to remove any factual sub-tree prior to
further processing. Appeal Br. 6–16 (citing Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299 (Fed. Cir. 2016); Finjan, Inc. v. Blue Coat Sys., Inc., 879
F.3d 1299 (Fed. Cir. 2018); Spec. ¶¶ 24–30); Reply Br. 4–11. Appellant
argues that the present claims recite a novel and nonobvious improvement to
prior art computer mechanisms. Appeal Br. 8. Appellant argues the present
claims are patent eligible because they recite the use of a specific machine
that is not present within a general purpose computing device. Id.; Reply Br.
7. Appellant argues the present claims do not preempt any abstract idea.
Appeal Br. 18; Reply Br. 6. Appellant argues that the Examiner fails to
provide sufficient evidence to support the finding that the additional
elements implementing the abstract idea are well-understood, routine, and
conventional. Appeal Br. 18–19, 21–22 (citing Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018)); Reply Br. 13. Appellant argues the present
claims recite a non-conventional and non-generic arrangement of known,
conventional elements, which results in an inventive concept. Appeal Br.
19–21 (citing BASCOM Global Internet Services, Inc. v. AT&T Mobility
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LLC, 827 F.3d 1341 (Fed. Cir. 2016)). We disagree with Appellant.
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question that we resolve
pursuant to the 2019 Revised Guidance. The emphasized portions of claim
1, reproduced above (see supra at 2–3), recite concepts performed in the
human mind (including an observation, evaluation, judgment, opinion) with
the assistance of pen and paper because they require providing different
weightings for hypothetical spans and specifically modifying the
hypothetical sub-tree to remove any factual sub-tree prior to further
processing. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. Concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion) fall into the category of mental processes. Id. Mental
processes are a type of abstract idea. Id.
We, therefore, disagree with Appellant’s argument that a human
cannot perform the operations recited in the present claims. Appeal Br. 22–
23. The additional elements (i.e., the non-emphasized portions of claim 1
recited supra at 2–3) are generic computer components for the reasons
discussed infra.
We must still determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the
abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at
54–55. We therefore (1) identify whether there are any additional recited
elements beyond the abstract idea, and (2) evaluate those elements both
individually and collectively to determine whether they integrate the
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exception into a practical application. See id.
Accordingly, we proceed to Prong 2.
E. Step 2A, Prong 2
Here, the only elements in the claims beyond the abstract idea are
“processor,”6 “data processing system,”7 “memory,” and “computing
device.”8 See 2019 Revised Guidance, 84 Fed. Reg. at 52. The additional
elements of the present claims do not integrate the abstract idea into a
practical application because they do not impose any meaningful limits on
practicing the abstract idea for the following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The October 2019 Update addresses
how we consider evidence of improvement that is presented to us. The
Update states
the evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole “integrates [the]
judicial exception into a practical application [that] will apply,
rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial
exception.
Update 11 (emphases added). The Update further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the

6 This additional element appears only in claims 1 and 20. See Claims App.
7 This additional element appears only in claim 1. See Claims App.
8 This additional element appears only in claim 11. See Claims App.
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asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Id. at 13 (emphasis added).
We disagree with Appellant’s argument that the present claims recite
an improvement to the data processing system by providing different
weightings for hypothetical spans and specifically modifying the
hypothetical sub-tree to remove any factual sub-tree prior to further
processing. Appeal Br. 6–16 (citing Enfish, LLC v. Microsoft Corp., 822
F.3d 1327; McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299;
Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299; Spec. ¶¶ 24–30). We
turn our focus to any evidence Appellant cites, as discussed in the October
2019 Update.
Here, Appellant refers to paragraphs 24–30 of the Specification.
Appeal Br. 6–16 (citing Spec. ¶¶ 24–30). However, these alleged
improvements are improvements distinguishing portions of text that are
directed to actual factual statements and portions of text that include
hypothetical descriptions, which falls within the category of an abstract idea,
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as discussed supra, not an improvement to another technological field or the
functioning of a computer itself. “[A] claim for a new abstract idea is still an
abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Nor does Appellant’s citation
to the Specification (Appeal Br. 6–16) demonstrate that the problem to be
solved is a technological problem, but rather is in the realm of distinguishing
portions of text that are directed to actual factual statements and portions of
text that include hypothetical descriptions in a manner that merely provides
instructions to generic computer components operating in a generic manner.
See id.; Spec. ¶¶ 40, 63, 91.
In this case, we conclude that the present claims do not recite an
improvement to another technological field or the functioning of a computer
itself, but rather amount simply to using generic computer components and
operations to perform one or more abstract ideas.
With regard to Appellant’s argument that the present claims recite a
novel and nonobvious improvement to prior art computer mechanisms
(Appeal Br. 8), Appellant improperly conflates the requirements for patent-
eligible subject matter (§ 101) with the independent requirements of novelty
(§ 102) and non-obviousness (§ 103). “The ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–
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89; see also Genetic, 818 F.3d at 1376 (stating that, “under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature (or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility”).
We disagree with Appellant’s argument that the present claims are
patent eligible because they recite the use of a specific machine that is not
present within a general purpose computing device. Appeal Br. 18. The
Specification indicates the additional elements (i.e., “processor,” “data
processing system,” “memory,” and “computing device”) recited in the
present claims are merely generic computer components used to implement
the abstract idea. Spec. ¶¶ 40, 63, 91; see also MPEP § 2106.05(b) (“Merely
adding a generic computer, generic computer components, or a programmed
computer to perform generic computer functions does not automatically
overcome an eligibility rejection.”).
Appellant’s arguments that the present claims do not preempt any
abstract idea (Appeal Br. 18), do not persuade us that the claims are patent
eligible. Although preemption may denote patent ineligibility, its absence
does not demonstrate patent eligibility. See FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a
patent-ineligible concept, preemption concerns “are fully addressed and
made moot” by an analysis under the Mayo/Alice framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant does not make any other arguments pertaining to Step 2A,
Prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
F. Step 2B
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We disagree with Appellant’s argument that the Examiner fails to
provide sufficient evidence to support the finding that the additional
elements implementing the abstract idea are well-understood, routine, and
conventional. Appeal Br. 18–19, 21–22 (citing Berkheimer). Notably, the
Examiner finds that the abstract idea is implemented with additional
elements that are well-understood, routine, and conventional and cites to the
Specification to provide sufficient evidentiary support. Ans. 4 (citing Spec.
¶¶ 33–34). Other paragraphs of the Specification also support the
Examiner’s determination in this regard, because it explains that
“processor,” “data processing system,” “memory,” and “computing device”
are generic computer components. Spec. ¶¶ 40, 63, 91.
An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?”’ (emphasis added, brackets in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention’s

use of the ineligible concept to which it was directed were well-understood,
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routine and conventional” (emphasis added)).
We additionally disagree with Appellant’s argument that the present
claims recite a non-conventional and non-generic arrangement of known,
conventional elements, which results in an inventive concept. Appeal Br.
19–21 (citing BASCOM). Appellant’s arguments fail to identify any
additional element or particular combination of elements that allegedly are
unconventional, non-routine, or not well-understood. See Appeal Br. 19–21.
We cite paragraphs in support of our finding that the generic computer
components were well-understood, routine, and conventional components
performing conventional computer operations. Spec. ¶¶ 40, 63, 91.
Moreover, in BASCOM, the claims were directed to “a filter
implementation versatile enough that it could be adapted to many different
users’ preferences while also installed remotely in a single location.”
BASCOM, 827 F.3d at 1348–51. The inventive concept was “the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user” that “gives the
filtering tool both the benefits of a filter on a local computer and the benefits
of a filter on the ISP server.” Id. at 1350. Thus, when considered as an
ordered combination, the court concluded the claims provided “an inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.” Id. Here, the present claims recite an
abstract idea using additional elements that are generic computer
components as discussed supra, in §§ D. and E. or at best, improving an
abstract idea—not an inventive concept for the reasons discussed in §§ D.
and E.
Appellant argues dependent claims 2–8, 12–18, and 21–23 separately.
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Appeal Br. 26–29. Based on our review of the dependent claims, as
discussed supra, these claims do not recite any additional features that
would transform the abstract idea embodied in independent claims 1, 11, and
20 into an inventive concept. Accordingly, we sustain the Examiner’s
rejection of: (1) independent claims 1, 11, and 20; and (2) dependent claims
2–8, 12–18, and 21–23 under 35 U.S.C. § 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv) (2018).

CONCLUSION

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–8, 11–18,
20–23
101 Eligibility 1–8, 11–18,
20–23