Matthew Robert. Teskey et al.

Patent Trials and Appeals Board

Apr 7, 2020

13098297 - (D) (P.T.A.B. Apr. 7, 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.
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.
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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
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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
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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.
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(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?
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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
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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
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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
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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
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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.
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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
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“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.
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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