Marius Doornenbal

Patent Trials and Appeals Board

Jan 30, 2020

14080141 - (D) (P.T.A.B. Jan. 30, 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.
14/080,141 11/14/2013 Marius Doornenbal ELV0004PA/77434-6 2592
146524 7590 01/30/2020
Dinsmore & Shohl LLP
255 E. Fifth Street
Suite 1900
Cincinnati, OH 45202
EXAMINER
CHAVEZ, RODRIGO A
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
01/30/2020 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 MARIUS DOORNENBAL
____________________

Appeal 2018-004339
Application 14/080,1411
Technology Center 2600
____________________

Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOVAN,
Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1–20, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. The real party in interest is Elsevier B.V. (Appeal Br. 2.)
2 Our Decision refers to the Specification (“Spec.”) filed November 14,
2013, the Final Office Action (“Final Act.”) mailed May 2, 2017, the Appeal
Brief (“Appeal Br.”) filed September 18, 2017, the Examiner’s Answer
(“Ans.”) mailed January 22, 2018, and the Reply Brief (“Reply Br.”) filed
March 20, 2018.
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Application 14/080,141

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CLAIMED INVENTION
The claims are directed to a method and system for “annotating
electronic text documents with multiple entities defined in a controlled
vocabulary extracted from a compound noun phrase” in the electronic
document. (Abstract; Spec. ¶¶ 1–2.)
Claims 1, 9, and 15 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of annotating an electronic text document, the
method comprising:
searching, by a computing device, the electronic text
document for instances of congruent compound noun phrases
comprising a head and a modifier;
determining that a first congruent compound noun phrase
is found;
determining a preceding word that precedes the modifier
of the first congruent compound noun phrase;
searching a controlled vocabulary for a second congruent
compound noun phrase comprising the preceding word and the
head of the first congruent compound noun phrase;
determining that the second congruent compound noun
phrase is found in the controlled vocabulary; and
annotating the electronic text document with the second
congruent compound noun phrase comprising the preceding
word and the head of the first congruent compound noun phrase.

(Appeal Br. 28–33 (Claims App.).)

REJECTION3
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. (Final Act. 3–6.)

3 Claims 1, 9, and 15 were rejected under 35 U.S.C. § 112(b) as being
indefinite. (Final Act. 6–7.) However, this rejection was withdrawn in the
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ANALYSIS
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the progress of science” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas, are not
patent-eligible subject matter. Thales Visionix Inc. v. United States, 850
F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (573 U.S. at 217–18). The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we “examine the elements of the

Examiner’s Answer, and is no longer pending on appeal. (Ans. 2.)
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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 (internal quotation marks omitted) (quoting Mayo,
566 U.S. at 72, 79). There is no need to proceed to the second step,
however, if the first step of the Alice/Mayo test yields a determination that
the claim is directed to patent-eligible subject matter.
The Patent Office has recently revised its guidance for how to apply
the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (January 7, 2019) (“Revised Guidance”).
Under the Revised Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. 84 Fed. Reg.
at 54. When the judicial exception is so integrated, then the claim is not
directed to a judicial exception and is patent-eligible under § 101. 84 Fed.
Reg. at 54. Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. 84 Fed. Reg. at 56; Alice,
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573 U.S. at 217–19, 221. Evaluation of the inventive concept involves
consideration of whether an additional element or combination of elements
(1) adds a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present; or (2) simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present.
Applying Step 1 of the Revised Guidance (which is unchanged from
the prior guidance) to the present case, we determine independent claim 1
recites a “method,” independent claim 9 recites a “computer-program
product,” and independent claim 15 recites a “system,” which are a form of
“process,” “manufacture,” and “machine,” respectively, thereby falling
within one of the categories enumerated under § 101 and satisfying Step 1 of
the Revised Guidance.
We proceed to apply Step 2A of the Revised Guidance to determine if
the claims are “directed to” a judicial exception. As discussed supra, the
first prong of Step 2A under the Revised Guidance is to determine whether
the claims recite a judicial exception including (a) mathematical concepts;
(b) certain methods of organizing human activity; and (c) mental processes.
Revised Guidance, 84 Fed. Reg. at 51–52. Here, the Examiner determines
that independent claims 1, 9, and 15 are “directed to a patent-ineligible
abstract concept of annotating an electronic text document” which is “an
abstract concept that could be performed in the human mind, or by a human
using a pen and paper.” (Final Act. 4–5 (citing CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011); In re Comiskey, 554 F.3d
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967 (Fed. Cir. 2009)); Ans. 3, 5–6.) The Examiner further finds the claims
merely manipulate data by “collecting data . . . recognizing certain data
within the collected data set, and . . . storing that recognized data in a
memory.” (Ans. 6–7.)
We are not persuaded by the Examiner’s findings, as we are unable to
agree that the Examiner has adequately found the concept of claim 1 (and
similar claims 9 and 15) to be similar to other concepts (e.g., mental
processes, pen and paper actions, and data collection and manipulation)
found to be abstract ideas by our reviewing courts. (See Appeal Br. 9–13;
Reply Br. 2, 6–9.) Appellant’s claim 1 recites a method of annotating an
electronic text document by searching the electronic document for particular
types of phrases and finding such phrases, searching a controlled vocabulary
for phrases related to the identified phrases, and annotating the electronic
text document with related phrases found in the controlled vocabulary.
Here, we are unable to determine from the Examiner’s analysis
whether such technique for automatic phrase recognition and automatic
annotation of electronic documents describes subject matter that is a
mathematical concept, a method of organizing human activity, or a mental
process (i.e., one of the three types of abstract ideas identified by the
Revised Guidance). For example, Appellant’s method is not performable by
a human being or by pen and paper (as the Examiner asserts) because the
method requires computer-enabled recognition of phrases in electronic
documents and in a controlled vocabulary, and electronic annotation (e.g.,
by a mark-up language such as XML, or by changing metadata, see Spec.
¶¶ 2, 20, 22–23, 43). (Appeal Br. 11–13; Reply Br. 7–9.) Claim 1 also does
not merely recite data collection and manipulation (as the Examiner asserts);
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rather, claim 1 relates to a method for automatic updating of electronic
documents to provide semantic information for multi-word phrases. (See
Spec. ¶¶ 2–3, 25, 28, 31.)
Moreover, even if Appellant’s claims 1, 9, and 15 were considered to
recite an abstract idea, we are persuaded by Appellant’s arguments that the
claims integrate an abstract idea into a practical application (in accordance
with the second prong of Step 2A under the Revised Guidance). (Appeal Br.
10–11, 21; Reply Br. 6–7, 11.) Specifically, the claimed technique for
annotating electronic text documents improves computer-enabled
recognition of multi-word phrases in electronic documents, and improves
automatic annotation of electronic documents to provide semantic
information for multi-word phrases. (Reply Br. 6–7, 11; see Spec. ¶¶ 1–4.)
As Appellant’s Specification explains, a “congruent compound noun
phrase” is a multi-word phrase comprising a “head” (e.g., a parent concept)
and a “modifier” modifying the head, the congruent compound noun phrase
being “a compound noun phrase wherein the linguistic, syntactic head of a
compound noun phrase is the linguistic parent as defined by the controlled
vocabulary, and the context of the compound noun phrase is discernible
from the modifier.” (See Spec. ¶¶ 14, 16, 46.) A “controlled vocabulary” is
a data structure, such as a thesaurus, taxonomy, or subject index, in which
phrases are organized and clustered in a semantic network based on field-
specific meanings, as well as semantic inheritance relationships and/or
common head terms. (See Spec. ¶¶ 15–16, 21, 28.) Appellant’s automatic
annotation method (i) searches for and identifies congruent compound noun
phrases in the electronic text document, (ii) analyzes each identified
congruent compound noun phrase to determine a preceding word in the
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electronic document that precedes the phrase’s modifier, (iii) searches a
controlled vocabulary for phrases related to the identified congruent
compound noun phrase and identifies such phrases as “a second congruent
compound noun phrase comprising the preceding word and the head of the
first congruent compound noun phrase,” and (iv) annotates the electronic
text document with the second congruent compound noun phrase comprising
the preceding word and the head of the first congruent compound noun
phrase. The electronic text document is “annotated with information
pertaining to the multiple phrases found in the controlled vocabulary”—such
as information including phrase meanings and domain-defined entities/field-
related phrases extracted from the controlled vocabulary—by adding
metadata or updating the electronic document by a mark-up language such
as XML. (See Spec. ¶¶ 2, 15, 20, 36, 43, 49, 57.)
As Appellant explains, the claimed automatic annotation technique
solves a problem in the software arts, which is that existing programs do not
recognize and annotate multi-word semantic units in electronic documents:
Compound noun phrases are multiple word phrases that
comprise at least one modifier and a head. For example, in the
compound noun phrase “thin film,” the word “thin” is the
modifier and the word “film” is the head. In some instances, a
compound noun phrase may have multiple modifiers, such as
“epitaxial thin film,” wherein both “epitaxial” and “thin” are
modifiers that modify head word “film.” Such compound noun
phrases may be referred to as interdigitated terms. In the present
example, the word “thin” appears between “epitaxial” and
“film.” In current systems, term annotations are disallowed on
electronic document texts if there are meaningful intervening
words or tokens. However, multiple phrases may be intended by
an interdigitated term. Electronic text documents are therefore
not annotated with information regarding these hidden phrases.
Accordingly, a need exists for alternative methods for extracting
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information from single compound noun phrases to provide
additional annotation information for electronic text documents.

(Spec. ¶¶ 3–4 (emphasis added); see also Reply Br. 6–7; Appeal Br. 10–11.)
Appellant’s claimed technique provides a solution to the above-mentioned
problem, improving computer-enabled recognition and extraction of multi-
word phrases from electronic documents, and providing automatic
annotation of multi-word phrases (such as interdigitated terms) in the
electronic documents:
In processing text documents, it may be advantageous to extract
each domain-defined entity [(compound noun phrase or term that
is present within the controlled vocabulary)] present in the text
document for annotation purposes as well as to properly index
the text document within the corpus. When interdigitated terms
are used in the electronic text document, such as “corrosion-
resistant aluminum alloy,” “epitaxial thin films,” and “ultrasonic
surface wave,” it may be beneficial to extract additional
compound noun phrases found in the controlled vocabulary that
are not present within the text . . . .
By extracting these additional compound noun phrases
and annotating the electronic text document accordingly,
indexing of the electronic document may be improved. These
additional compound noun phrases may also enable more
accurate searching of the document corpus by users desiring to
surface particular documents based on a search query. . . .
[E]mbodiments described herein provide for extraction of
multiple defined entities from a controlled vocabulary using a
single compound noun phrase. Electronic text documents may
be annotated with multiple compound noun phrases to provide
for more precise annotation with phrases that would otherwise
not be detected.

(Spec. ¶¶ 26–27, 57.)
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Thus, Appellant’s claimed technique improves computer-enabled
recognition of phrases in electronic documents, and automatic annotation of
electronic documents to provide semantic information for multi-word
phrases. (Reply Br. 2, 6–7, 11; Appeal Br. 14–16; see McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1310, 1313, 1316 (Fed. Cir. 2016)
(patent eligible claims employed “rules that define output morph weight set
stream as a function of phoneme sequence and time of said phoneme
sequence” to allow “computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’ that
previously could only be produced by human animators”); Visual Memory
LLC v. NVIDIA Corp., 867 F.3d 1253, 1259–60 (Fed. Cir. 2017) (patent-
eligible claims were “directed to a technological improvement: an enhanced
computer memory system” with “programmable operational characteristics
. . . configurable based on the type of processor,” and “the specification
discusses the advantages offered by the technological improvement”).)
Because claims 1, 9, and 15 integrate the judicial exception into a
practical application, we find claims 1, 9, and 15, and their dependent claims
2–8, 10–14, and 16–20, are not directed to a judicial exception (abstract
idea), rather, they are directed to patent-eligible subject matter under § 101.
Accordingly, we do not address Step 2B of the Revised Guidance
(corresponding to step two of the Alice/Mayo test).
For these reasons, we do not sustain the Examiner’s rejection of
claims 1–20 as directed to ineligible subject matter under 35 U.S.C. § 101.

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DECISION SUMMARY
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 is
REVERSED.

In summary:
Claims
Rejected
35 U.S.C. §  Basis/Reference(s Affirmed Reversed
1–20 101  Eligibility 1–20

REVERSED