Baum, Daniel et al.

Patent Trials and Appeals Board

Jan 30, 2020

15007703 - (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.
15/007,703 01/27/2016 Daniel Baum 10171-432US1 9820
75158 7590 01/30/2020
Verint Systems, Inc.
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
01/30/2020 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):
KCarroll@mcciplaw.com
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL BAUM, URI SEGAL,
RON WEIN, and OANA SIDI
____________

Appeal 2019-001764
Application 15/007,703
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
GARTH D. BAER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 and 3–16, which are all the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Appellant’s claimed invention is directed to “expanding an initial
ontology via processing of communication data, wherein the initial ontology
is a structural representation of language elements” (Abstract).
Independent claim 1, reproduced below with emphases added, is
representative of the subject matter on appeal:
1. An automated method for refining an initial ontology
stored in computer-readable memory via processing of
communication data, wherein the initial ontology is a structural
representation of language elements, the method comprising:

receiving the initial ontology comprising a set of entities,
a set of terms, a set of term-entity associations, a set of entity-
association rules, a set of abstract relations, and a set of
relation instances;

receiving a training set of communication data;

processing, by a computing system, the training set of
communication data to extract a set of significant phrases and
a set of significant phrase pairs from within the training set of
communication data;

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Verint Systems Ltd. as the real party in
interest (Appeal Br. 3).
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after the extracting, adding, by the computing system,
the set of significant phrases as ontology terms to the set of
terms stored in the initial ontology, and then associating, by the
computing system, the added ontology terms to ontology
entities of the set of entities;

after the associating, adding, by the computing system,
new abstract relations to the set of abstract relations stored in
the initial ontology, the new abstract relations being based on
both the set of significant phrase pairs and a scoring function
that associates a respective score to each phrase pair of the set
of significant phrase pairs;

after the adding of the new abstract relations to the
stored initial ontology, adding, by the computing system, new
relation instances to the set of relation instances stored in the
initial ontology, the new relation instances being based on both
the set of significant phrase pairs and the scoring function; and

after completion of the adding of the new relation
instances, outputting and storing the initial ontology, by the
computing system, as a refined ontological structure.

(Claims Appendix (Appeal Br. 19)).

REJECTION
The Examiner made the following rejection:
Claims 1 and 3–16 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 3.
ISSUE
The pivotal issue is whether the Examiner erred in finding that claims
1 and 3–16 are directed to non-statutory subject matter.
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ANALYSIS
We adopt the Examiner’s findings in the Answer and Final Office
Action and we add the following primarily for emphasis. We note that if
Appellant failed to present arguments on a particular rejection, we will not
unilaterally review those uncontested aspects of the rejection. See Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas,
551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may treat arguments
Appellant failed to make for a given ground of rejection as waived).
The Examiner determines claim 1 is patent ineligible under 35 U.S.C.
§ 101, because the claims are “directed to an abstract idea of refining a
collection/ontology of text, and involve organizing and manipulating
information through mathematical correlations” (Final Act. 3, citing
Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014)), and that when
[v]iewed as a whole, these additional claim elements do not
provide meaningful limitations to transform the abstract idea
into a patent eligible application of the abstract idea such that
the claims amounts to significantly more than the abstract idea
itself

(Final Act. 4; see also Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217
(2014) (describing the two-step framework “for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts”)).
After the docketing of this appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
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2019) (“Memorandum”). Pursuant to the Guidance “Step 2A,” the Office
first looks to whether the claim recites:
(1) Prong One: 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); and
(2) Prong Two: 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))).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then (pursuant to the
Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are 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 Memorandum.
Pursuant to Step 2A, Prong One of the Guidance, the Office first looks
to “evaluate whether the claim recites a judicial exception, i.e., an abstract
idea” (Memorandum, 84 Fed. Reg. at 54). Here, claim 1 recites “[a]n
automated method for refining an initial ontology . . . via processing of
communication data, wherein the initial ontology is a structural
representation of language elements.” Specifically, claim 1 recites the
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limitations italicized supra. The italicized portions of claim 1 represent the
steps performed in order to “refin[e] [the] initial ontology.”
While these limitations generally recite organizing and manipulating
information, the steps specifically recite that “new abstract relations” and
“new relation instances” are added based in part on a “scoring function that
associates a respective score to each phrase pair of the set of significant
phrase pairs.” The recitation of a “scoring function” is a “mathematical
calculation[]” under the Guidance. See Memorandum, 84 Fed. Reg. at 52;
see also October 2019 Update: Subject Matter Eligibility at 4. The
Guidance provides that these limitations, therefore, recite the abstract idea of
“mathematical concepts.” Memorandum, 84 Fed. Reg. at 52; see also SAP
Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
(“[S]electing certain information, analyzing it using mathematical
techniques, and reporting or displaying the results of the analysis . . . is all
abstract”); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) (“analyzing information . . . by mathematical algorithms,
without more” is abstract) (case citations omitted).
Accordingly, claim 1 “recites a judicial exception . . . [and] requires
further analysis in Prong Two” of the Guidance. See Memorandum, 84 Fed.
Reg. at 54.
Pursuant to Step 2A, Prong Two, we are not persuaded the Examiner
has erred in finding that claim 1 is directed to an abstract idea. That is, we
determine claim 1 does not integrate the recited judicial exception into a
practical application. See Memorandum, 84 Fed. Reg. at 54.
Appellant argues “[t]he pending claims do not simply manipulate
existing information to generate additional information, as in Digitech”
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(Appeal Br. 13), but instead add “the extracted set of significant phrases
from the training set” and
add additional term-entity associations, abstract relations, and
relation instances, thereby transforming the structure of the
initial ontology to generate the refined ontological structure

(Appeal Br. 13). Appellant further contends “the pending claims are
explicitly tied to a specific structure or machine” (Appeal Br. 13), and that
because “the pending claims explicitly recite performance of the ‘automated
method . . . by a computing system,’ Digitech does not apply” (Reply Br. 4).
Appellant additionally argues that “[p]rocesses that automate tasks
that humans are capable of performing are patent eligible if properly
claimed” (Appeal Br. 17, citing McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016)). Appellant contends that
[m]achine learning is a technological process. The claimed
features for how to extract significant phrases and significant
phrase pairs from a training set of communication data and
change the structure of an initial ontology to generate a refined
ontological structure is an improvement of the technological
process

(Appeal Br. 17).
We are not persuaded by Appellant’s arguments. Appellant relies on
the claimed “refined ontological structure” produced by the method to
distinguish the claimed method from the holding in Digitech. However, the
claimed method steps take an abstract, pre-existing ontological structure, and
1. add “the set of significant phrases as ontology terms to the set of
terms stored in the initial ontology”;
2. associate “the added ontology terms to ontology entities of the set of
entities”;
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3. add “new abstract relations to the set of abstract relations”; and
4. add “new relation instances to the set of relation instances,”
and finally then output the result.
Appellant has not persuasively shown how refining an abstract pre-
existing ontological structure using mathematical techniques does not run
afoul of Digitech’s admonition that “[w]ithout additional limitations, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.”
Digitech, 758 F.3d at 1351.
Nor do we see any claim steps that comprise an improvement of a
technological process akin to McRO, as Appellant’s automated method does
not go “beyond merely ‘organizing [existing] information into a new form’”
(McRO, 837 F.3d at 1315 (citation omitted)). Rather, the disclosure
indicates that
[i]n general, training module 300 is an automated process that
accepts an initial ontology and a set of text documents, gives
scores to the existing ontology components based on their
relevance to the text documents, and enriches the initial
ontology with additional terms, abstract relations and relation
instances that are characteristic to those documents

(Spec. ¶ 30, emphasis added), and such an enrichment appears to retain the
initial ontology’s existing form.
Moreover, Appellant’s purportedly improved abstract concept is still
an abstract concept under the Guidance. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea”) (emphasis omitted). That is, the
highlighted limitations, which form steps to refine the ontological structure,
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are part of the recited abstract idea as discussed above. As the argued
elements are part of the abstract idea, they are not additional elements that
integrate the identified abstract idea into a practical application. See
Memorandum, 84 Fed. Reg. 54–55 (“[E]valuate integration into a practical
application by: (a) Identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s)”).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. We determine the “claim recites a judicial exception and fails to
integrate the exception into a practical application,” therefore we proceed
with “further analysis pursuant to the second step of the Alice/Mayo test
(USPTO Step 2B).” Memorandum, 84 Fed. Reg. at 51.
We agree with the Examiner that the claimed elements and
combination of elements do not amount to significantly more than the
judicial exception itself. See Final Act. 4; see also Memorandum, 84 Fed.
Reg. at 56. Independent claim 1 additionally recites “a computing system.”
We agree with the Examiner that
[t]he additional elements or combination of elements in the
claims other than the abstract idea per se (i.e. use of terms
automated, computing system, processor, memory, computer-
readable medium) amount to no more than mere instructions to
implement the idea on a computer, and/or (ii) recitation of
generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent
industry

(Final Act. 4).
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Appellant argues that “unlike Digitech, the pending claims are
explicitly tied to a specific structure or machine” (Appeal Br. 13), but does
not point to any portion of the disclosure as describing the “computing
system” and does not explain how the structure or machine is “specific.”
The disclosure generically describes “computing system 1200” as being
“generally a computing system that includes a processing system 1206,
storage system 1204, software 1202, communication interface 1208 and a
user interface 1210” (Spec. ¶ 58; see also Fig. 7, ¶¶ 59–64). See Alice, 573
U.S. at 226 (“But what petitioner characterizes as specific hardware . . . is
purely functional and generic. Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) (Claims reciting, inter alia, sending messages over a
network, gathering statistics, using a computerized system to automatically
determine an estimated outcome, and presenting offers to potential
customers found to merely recite “well-understood, routine conventional
activit[ies].”).
Accordingly, we affirm the Examiner’s rejection of independent claim
1, and independent claims 6 and 10, as well as dependent claims 3–5, 7–9,
and 11–16 not separately argued with particularity. See Appeal Br. 17–18.

CONCLUSION
The Examiner did not err in finding that claims 1 and 3–16 are
directed to non-statutory subject matter.

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DECISION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–16 101 Eligibility 1, 3–16

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)(1)(iv).

AFFIRMED