Matthew Robert. Teskey et al.Download PDFPatent Trials and Appeals BoardApr 7, 202013098297 - (D) (P.T.A.B. Apr. 7, 2020) 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. 13/098,297 04/29/2011 Matthew Robert Teskey 20628-P39343US00 8422 1059 7590 04/07/2020 BERESKIN & PARR LLP/S.E.N.C.R.L., s.r.l. 40 KING STREET WEST 40TH FLOOR TORONTO, ONTARIO M5H 3Y2 CANADA EXAMINER BULLINGTON, ROBERT P ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 04/07/2020 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): ipprocessingcentre@bereskinparr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW ROBERT TESKEY, JOHN ALLAN BAKER, KENNETH JAMES CHAPMAN, OWEN CORNELIUS MULLINGS, BRIAN JOHN CEPURAN, and TERRI-LYNN ANNE BROWN Appeal 2018-003203 Application 13/098,297 Technology Center 3700 Before BRETT C. MARTIN, BRANDON J. WARNER, and ALYSSA A. FINAMORE, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 4–17, and 19–34. Claims 3 and 18 were canceled during prosecution. Appeal Br. 19, 24. 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. Appellant identifies the real party in interest as D2L Corporation. Appeal Br. 3. Appeal 2018-003203 Application 13/098,297 2 CLAIMED SUBJECT MATTER The claims are directed “to electronic learning, and more particularly to systems and methods for providing educational course design and assessment for electronic learning systems that include learning modules.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method for designing an educational course comprising: activating a course design module; presenting at least one course parameter to a course designer using the course design module; receiving a first input from the course designer associated with the at least one course parameter; generating and presenting at least one modified course parameter for guiding the course designer in dynamic response to the first input; receiving at least one second input associated with the modified course parameter from the course designer; defining at least one learning objective for the course using the course design module; providing at least one course content module having educational material related to the at least one learning objective for the course; providing at least one assessment module for assessing a learner’s performance in the course in relation to the at least one learning objective; generating at least one learning module based on at least one of the learning objectives, the learning module including one or more course content modules and assessment modules associated with that learning objective; storing the at least one learning module in a data storage device; and making the at least one stored learning module available for use to develop at least one other educational course, the making available comprising storing the at least one stored learning module with at least one related keyword or tag, the at Appeal 2018-003203 Application 13/098,297 3 least one stored learning module being electronically identifiable when an electronic search of the data storage device is carried out using the at least one tag or keyword. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Elzinga US 2005/0026131 A1 Feb. 3, 2005 Packard ’480 US 2008/0057480 A1 Mar. 6, 2008 Packard ’245 US 2011/0039245 A1 Feb. 17, 2011 REJECTIONS Claims 1, 2, 4–17, and 19–34 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Ans. 2. Claims 1, 2, 4–17, and 19–34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Packard ’480 and Packard ’245. Ans. 4. Claims 5–8 and 20–23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Packard ’480, Packard ’245, and Elzinga. Ans. 15. OPINION Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court instructs us to “first determine whether the claims at issue are directed to a patent-ineligible concept,” id. at 216–18, and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If this initial condition is met, we then move to the second step, in which we “consider the elements of each claim both individually and ‘as an ordered Appeal 2018-003203 Application 13/098,297 4 combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the second step as a search for “an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73). The USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), 84 Fed. Reg. 50 (Jan. 7, 2019).2 Under that guidance, we first look to whether the claim recites: (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, and 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”). 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: 2 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, https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_ update.pdf. Appeal 2018-003203 Application 13/098,297 5 (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. See generally Guidance. ANALYSIS Claim Grouping Appellant argues the claims as a group for the purpose of the rejection under a judicial exception to § 101. Appeal Br. 10‒14. As to this rejection, we select claim 1 as representative of the group, and the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Examiner’s Findings and Conclusion In the first step of the Alice inquiry, the Examiner rejects the claims, stating that the claims are drawn to the “abstract idea of designing an educational course.” Ans. 2. The Examiner identifies the claimed series of steps for designing an educational course as a “process [that] can be practiced as a mental process performed in the human mind or by pen and paper.” Ans. 3. At Alice step 2, the Examiner additionally finds that the claims do not add a meaningful limitation to the abstract idea so as to amount to significantly more than the judicial exception. Id. Analysis According to the Guidance Step One: Does Claim 1 Fall within a Statutory Category of § 101? Appeal 2018-003203 Application 13/098,297 6 We first examine whether the claim recites one of the enumerated statutory classes of subject matter, i.e., process, machine, manufacture, or composition of matter, eligible for patenting under 35 U.S.C. § 101. Claim 1 is directed to a method, which is one of the statutory classes (i.e., a process) under 35 U.S.C. § 101. Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception? We next look to whether the claim recites 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, and mental processes. In this instance, claim 1 recites steps that amount to mental processes. Specifically, the claim recites: activating a course design module; presenting at least one course parameter to a course designer using the course design module; receiving a first input from the course designer associated with the at least one course parameter; generating and presenting at least one modified course parameter for guiding the course designer in dynamic response to the first input; receiving at least one second input associated with the modified course parameter from the course designer; defining at least one learning objective for the course using the course design module; providing at least one course content module having educational material related to the at least one learning objective for the course; providing at least one assessment module for assessing a learner’s performance in the course in relation to the at least one learning objective; generating at least one learning module based on at least one of the learning objectives, the learning module including one Appeal 2018-003203 Application 13/098,297 7 or more course content modules and assessment modules associated with that learning objective; storing the at least one learning module in a data storage device; and making the at least one stored learning module available for use to develop at least one other educational course, the making available comprising storing the at least one stored learning module with at least one related keyword or tag, the at least one stored learning module being electronically identifiable when an electronic search of the data storage device is carried out using the at least one tag or keyword. Although these steps are claimed as being done by a computer, the activities themselves are all capable of being performed by a human without a computer, and fall into the abstract idea of mental processes. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”). We therefore determine that claim 1 recites the abstract idea of mental processes, which is a judicial exception to patent- eligible subject matter. Step 2A, Prong Two: Does Claim 1 Recite Additional Elements that Integrate the Judicial Exception into a Practical Application? Following our Office guidance, having found that claim 1 recites a judicial exception, we next determine whether the claim recites “additional elements that integrate the exception into a practical application” (see MPEP §§ 2106.05(a)–(c), (e)–(h)). See Guidance, 84 Fed. Reg. at 54. As noted above, each of the claimed steps is recited as being performed by a computer or storage device specified at a high level of generality and, does not result in an improvement in the functioning of a computer or other technology or technological field. See Spec. ¶ 72, Fig. 1. The recitations of the generic Appeal 2018-003203 Application 13/098,297 8 structures with which the recited steps are performed are merely instructions to use a generic computer system as a tool to perform the abstract idea. Thus, claim 1 does not apply, rely on, or use the mental process steps in a manner that imposes a meaningful limit on those steps. Rather, the claim is simply a drafting effort designed to monopolize the mental process steps of claim 1. See MPEP § 2106.05(f) (“Use of a computer or other machinery in its ordinary capacity for . . . tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea . . . does not provide significantly more.”). In short, the additional elements discussed above: (1) do not result in an improvement to the functioning of a computer or other technology; (2) are not any particular machine; (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §§ 2106.05(a)–(c), (e)– (h). Consequently, the claimed invention does not integrate the abstract idea into a “practical application.” For these reasons, the additional elements of claim 1 do not integrate the judicial exception into a practical application. Thus, claim 1 is directed to an abstract idea, which is a judicial exception to patent-eligible subject matter under 35 U.S.C. § 101. Step 2B: Does Claim 1 Recite an Inventive Concept? We next consider whether claim 1 recites any additional elements, individually or as an ordered combination, that transform the abstract idea into a patent-eligible application, e.g., provide an inventive concept. Alice, 573 U.S. at 217–18. The only additional elements are a computer, a storage Appeal 2018-003203 Application 13/098,297 9 device, and a course design module used for routine computer functionality to enact the method steps. Ans. 3. These additional elements do not provide, either individually or as a combination, improvements to another technology or technical field or the functioning of the computer itself, but merely are conventional computing components included to perform the method. According to Office guidance, under Step 2B, “examiners should . . . evaluate the additional elements individually and in combination . . . to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).” See Guidance, 84 Fed. Reg. at 56 (emphasis added). Thus, the second step of the inquiry (Step 2B) looks at the additional elements in combination. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). As noted above, the storage device, computer, and course design module are invoked as conventional tools. Apart from being used to perform the abstract idea itself, the generic computer system components only serve to perform well-understood functions (e.g., retrieving, determining, presenting, providing, etc.). See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.”). In our view, claim 1 fails to add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field, but instead “simply appends well-understood, routine, conventional Appeal 2018-003203 Application 13/098,297 10 activities previously known to the industry, specified at a high level of generality, to the judicial exception.” See Guidance, 84 Fed. Reg. at 56. That is, claim 1 is not directed to a specific application designed to achieve an improved technological result, as opposed to being directed to merely ordinary functionality of the above-recited additional elements to apply an abstract idea. For the reasons discussed above, we find no additional element, alone or in combination, recited in claim 1 that contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. See Alice, 573 U.S. at 221. Appellant’s Contentions Appellant first argues that the “claims are directed to the realm of electronic learning using computing devices.” Appeal Br. 11. Although this may be true generally, the claims themselves are not specific to electronic learning per se. The claims are merely directed to course design, which could be utilized with or without an electronic learning environment. Appellant also argues that learning modules created according to the claims “can be stored, easily retrieved and reused for creating other course content.” Appeal Br. 12. Again, although this may be true, this is merely a benefit of computerized storage over paper file storage, but in itself is nothing more than the expected advantages of such electronic storage. In sum, all of the advantages touted by Appellant stem from performing the method by computer and could otherwise be performed by a human using traditional filing and course creation methods that are not computer-related. Accordingly, we are not persuaded of error in the Examiner’s rejection. Appeal 2018-003203 Application 13/098,297 11 Obviousness Appellant first argues that the rejection is improper because “[t]he different education material of Packard appears to relate to different learning modules, not a learning module that is a set of at least two stored elements, those elements being the ‘one or more course content modules and assessment modules.[’]” Reply Br. 3. As the Examiner states, however, Packard ’480 teaches that the modules may include both content and assessment. Ans. 24 (citing Packard ’480 ¶ 50). We further note that Packard ’480 specifically states that “lessons 302 in database 112 may include, for example, coursework . . . as well as worksheets, problem sets, assigned readings, lesson notes or outlines, quizzes, tests, long term projects, [and] in-class projects.” Packard ’480 ¶ 65. Accordingly, Packard ’480 does teach that the learning module includes both content and assessment modules. Appellant next asserts that “the disclosed ‘tag’ of Packard [’]245 merely relates to a tag delineating the type of resource, not that the at least one stored learning module is electronically identifiably in connection with the use of the tag.” Reply Br. 3–4. Although this may be true with respect to the tag recited in ¶¶ 247 and 249, Appellant does not address Packard ’245’s disclosure of keywords in ¶ 270. Packard explains that “various database records . . . are associated with additional information, such as, for example, other database records in the same database, other database records in another database, identifying keywords, and/or the like” and that “the database records can be associated with the additional information in any suitable manner.” Packard ’245 ¶ 270. This discussion discloses more than mere tags identifying a type of resource, but specifically discloses Appeal 2018-003203 Application 13/098,297 12 “identifying keywords” to correlate records according to the content of the various resources. Appellant also argues that “Packard [’]245 fails to disclose that such overall competency level is derived ‘by considering the assigned weights factors for the at least one first learning objective and the at least one second learning objective.’” Reply Br. 4. We find this argument unpersuasive of error because Packard ’245 specifically teaches weighting two different learning objectives and combining them to achieve an overall competency. As clearly disclosed in Packard ’245, “presentation of educational material associated with a first learning objective record can indicate 60% compliance of a standard and presentation of educational material associated with a second learning objective record can indicate 40% compliance of the standard.” Packard ’245 ¶ 72. Packard ’245 then goes on to explain that “[t]ogether, presentation of educational material associated with the first learning objective record and presentation of educational material associated with the second learning objective record indicates full compliance with the standard.” Id. As such it is clear that an overall competency is derived from combining weighted competency of two different learning objectives. Lastly, Appellant argues that the Examiner’s rejection only discloses adjustments to the individual learning plan, but not that the assessment modules are defined independently of the learning objective. Reply Br. 5. Appellant’s argument, however, does not address that the learning modules contain both assessment aspects as well as learning objectives, as discussed supra. See also Ans. 28–29. Nothing in Packard suggests that these separate tests and quizzes, i.e., assessment modules, are not independent of the learning objectives. Appeal 2018-003203 Application 13/098,297 13 Appellant does not provide any argument against the Examiner’s additional rejection involving Elzinga. Accordingly, we are not persuaded of error in the Examiner’s rejection. CONCLUSION The Examiner’s rejections are AFFIRMED. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–17, 19–34 101 Eligibility 1, 2, 4–17, 19–34 1, 2, 4–17, 19–34 103 Packard ’480, Packard ’245 1, 2, 4–17, 19–34 5–8, 20–23 103 Packard ’480, Packard ’245, Elzinga 5–8, 20– 23 Overall Outcome 1, 2, 4–17, 19–34 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation