Ex Parte Angell et al

Patent Trial and Appeal Board

Oct 9, 2018

12335521 (P.T.A.B. Oct. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/335,521 12/15/2008 Robert Lee Angell
79230 7590 10/11/2018
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END9200803 26US 1 1225
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/11/2018 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):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT LEE ANGELL, ROBERT R. FRIEDLANDER,
and JAMES R. KRAEMER
Appeal2017-003527 1
Application 12/335,521 2
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
September 21, 2016) and Reply Brief ("Reply Br.," filed December 19,
2016), and the Examiner's Answer ("Ans.," mailed October 18, 2016), and
Final Office Action ("Final Act.," mailed April 19, 2016).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
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Application 12/335,521
CLAIMED INVENTION
Appellants' claimed invention "relates generally to an improved data
processing system and in particular to a method and apparatus for generating
cohorts from video data" (Spec. ,r 1 ).
Claims 1, 8, 15, and 19 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A processor-implemented method for generating a
furtive glance cohort, the processor-implemented method
compnsmg:
responsive to receiving video data of a monitored
population, processing, by a processor, the video data to form
digital video data, wherein the digital video data comprises
metadata describing glancing patterns associated with one or
more subjects from the monitored population, wherein the
monitored population is a group of persons present at a
monitored location, and wherein the video data is collected by a
set of sensors;
analyzing, by the processor, the digital video data to
identify a set of furtive glance patterns from the glancing
patterns, wherein one or more furtive glance attributes for the
furtive glance cohort are selected from the set of furtive glance
patterns;
generating, by the processor, the furtive glance cohort
comprising members selected from the monitored population,
wherein each member of the furtive glance cohort has at least one
furtive glance attribute in common; and
implementing, by the processor, an inference engine to
generate an inference that the members of the furtive glance
cohort are collaborating on a plan to perform an act of collusion.
REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
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Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention. See id.
In rejecting claims 1-20 under§ 112, first paragraph, the Examiner
takes the position that the claims fail to comply with the written description
requirement because although the claims "recite the concept of identifying a
set of furtive glance patterns," the Specification simply discloses the concept
of using data models to identify a set of furtive glance patterns without
disclosing the standards or calculations used via the data models to
determine the furtive glance patterns (Final Act. 3). The Examiner
maintains that it, therefore, is unclear "what type of analysis is performed to
determine whether there are unexpected or unusual patterns" (id.).
As a further basis for the rejection, the Examiner notes that the claims
also recite the concept of determining a cohort based on a set of furtive
glance patterns (id.). And the Examiner concludes that the claims lack the
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requisite written description support in the Specification because the
Specification "simply describes the factors used to determine patterns," and
fails to disclose "how the factors and the patterns are used to determine a
cohort" (id. at 3--4).
The Examiner seemingly confuses the enablement provision of
35 U.S.C. § 112, first paragraph, with the written description requirement,
which, as the Examiner acknowledges, is a separate and distinct requirement
(id. at 3).
To satisfy the written description requirement, Appellants need only
demonstrate original descriptive support in the Specification for the subject
matter recited the claims. The Examiner has not established that the
Specification, as filed, lacks the requisite descriptive support. To the
contrary, as described above, the Examiner ostensibly concedes that the
Specification includes original descriptive support.
The Examiner has not established a prima facie case of
unpatentability. Therefore, we do not sustain the Examiner's rejection of
claims 1-20 under 35 U.S.C. § 112, first paragraph.
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
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Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under § 101, the Examiner
determined that the claims are directed to analyzing digital video data to
identify a set of furtive glance attribute patterns, generating a furtive glance
cohort, where each member of the cohort has at least one furtive glance
attribute in common, and generating an inference that the members of the
furtive glance cohort are collaborating on a plan to perform an act of
collusion, i.e., to the abstract ideas of using categories to organize, store, and
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transmit information, and comparing data to determine a risk level (Final
Act. 4). The Examiner also determined that the claims do not include
additional elements sufficient to amount to significantly more than the
judicial exception (id. at 5).
Independent Claims 1 and 19 and Dependent Claims 2-14 and 20
Appellants argue claims 1-14, 19, and 20 as a group (App. Br. 9-13).
We select claim 1 as representative. The remaining claims stand or fall with
claim 1. 37 C.F.R. §4I.37(c)(l)(iv).
Appellants first argue that the § 101 rejection cannot be sustained
because the claimed "sensors" that collect video data are machines and
integral to the pending claims (App. Br. 9 ("[W]ithout the sensors, there is
no video data; without the video data, there is no cohort; without the cohort,
there is no inference of an act of collusion."); see also Reply Br. 3).
That argument is not persuasive of Examiner error at least because
"not every claim that recites concrete, tangible components escapes the
reach of the abstract-idea inquiry." In re TL! Commc 'ns LLC Patent Litig.,
823 F.3d 607, 611 (Fed. Cir. 2016). Although claim 1 recites physical
components, e.g., sensors, the focus of claim 1 is not on the improvement of
any technology or technical field, but rather on implementation of the
abstract idea, i.e., analyzing video data of a monitored population to identify
members of the population who may be collaborating on a plan to perform
an act of collusion. The recited sensors merely provide the generic
environment in which to implement this abstract idea, i.e., the means for
collecting the video data.
Appellants' reliance also is misplaced to the extent that Appellants
cite SiRF Technology Inc. v. International Trade Commission, 601 F .3d
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1319 (Fed. Cir. 2010) as establishing that any invention that cannot be fully
performed without the use of a machine is necessarily patent-eligible (App.
Br. 9; see also Reply Br. 3).
In SiRF, Appellants challenged the Commission's determination that
the asserted claims of the '801 and '187 patents, 3 which are directed to
calculating an absolute position of a GPS receiver, recite patent-eligible
subject matter under§ 101. SiRF, 601 F.3d at 1331-32. In affirming the
Commission's decision, the Federal Circuit observed that claim 1 of the '801
patent requires "'pseudoranges' that estimate the distance from 'the GPS
receiver to a plurality of GPS satellites"' and that "[p ]seudoranges, which
are the distances or estimated distances between satellites and a GPS
receiver, can exist only with respect to a particular GPS receiver that
receives the satellite signals." Id. at 1332. And the court noted that claim 1
of the '187 patent is similarly tied to a GPS receiver because it requires "the
estimation of 'states' that are 'associated with a satellite signal receiver,' and
the formation of a 'dynamic model ... to compute [the] position of the
satellite signal receiver."' Id. The court, thus, determined that the claims of
both patents are directed to patent-eligible subject matter because "the
methods at issue could not be performed without the use of a GPS receiver;
indeed without a GPS receiver it would be impossible to generate
pseudoranges or to determine the position of the GPS receiver whose
position is the precise goal of the claims." Id. In other words, the claims of
both patents were determined patent-eligible not simply because the claims
require a GPS receiver, but because they are directed to improved techniques
3 U.S. Patent Nos. 6,417,801 ("the '801 patent") and U.S. Patent No.
6,937,187 ("the '187 patent").
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for computing the position of the GPS receiver. We are not persuaded that
any comparable situation is presented here.
We also cannot agree with Appellants that the Federal Circuit's ruling
in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) impacts
the patent-eligibility of the present claims (App. Br. 10-11; see also Reply
Br. 3--4). The Federal Circuit, in Enfish, explained that the first step in the
Mayo/Alice inquiry asks "whether the focus of the claims is on [a] specific
asserted improvement in computer capabilities ... or instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfish, 822 F.3d at 1336. Thus, in rejecting a§ 101 challenge at
the step one stage in the Mayo/Alice analysis in Enfish, the Federal Circuit
determined that the claims focused on a specific type of data structure, i.e., a
self-referential table for a computer database, designed to improve the way a
computer carries out its basic functions of storing and retrieving data, and
not on asserted advances in the uses to which existing computer capabilities
could be put. Id. at 1335-36.
We find no parallel here between claim 1 and the claims in Enfish nor
any comparable aspect in claim 1 that represents an improvement to
computer functionality. Rather than constituting an improvement in
computer functionality, claim 1 involves nothing more than collecting data
(i.e., video data of a monitored population); analyzing the data (i.e., to
identify a set of furtive glance attributes and generate a furtive glance cohort
of selected members of the monitored population who have at least one
furtive glance attribute in common); and presenting the results of the
collection and analysis (i.e., generating an inference that the members of the
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furtive glance cohort are collaborating on a plan to perform an act of
collusion).
Appellants assert that the court in Enfish "clarifies that an invention
may be statutory, even if it organizes and stores data, so long as it improves
how that data is organized and stored" (App. Br. 10; see also id. at 14). Yet,
we find nothing in the Specification, nor do Appellants direct us to any
portion of the Specification, that attributes, to the claimed invention, any
improvement in the way data is organized and stored.
Rather than paralleling the claims in Enfish, claim 1, in our view, is
similar to the claims that the Federal Circuit determined were patent-
ineligible in Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350
(Fed. Cir. 2016).
In Electric Power, the method claims at issue were directed to
performing real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results. Elec. Power Grp., 830 F.3d at 1351-52. The Federal
Circuit held that the claims were directed to an abstract idea because "[t]he
advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions."
Id. at 1354.
Similarly here, we find that claim 1 involves nothing more than
collecting video data of a monitored population; analyzing the data; and
generating an inference of planned collusion based on the analyzed data -
activities squarely within the realm of abstract ideas. See id. at 1353-54
( characterizing collecting information, analyzing information by steps
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people go through in their minds, or by mathematical algorithms, and
presenting the results of the collection and analysis, without more, as matters
within the realm of abstract ideas). There is no indication in the record that
the particular operations called for in claim 1 require any specialized
computer hardware or other inventive computer components, invoke any
assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform the
claimed method steps. Indeed, the Specification suggests just the opposite,
i.e., that the claimed invention is implemented using only generic computer
components (see, e.g., Spec. ,r,r 14--19), which is not enough for patent-
eligibility. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.").
Appellants assert that the claimed invention provides an improvement
in computer-related technology of "generating and utilizing a cohort by
1) modifying video data with novel metadata that describes 'glancing
patterns,' and then using such data to 2) create a cohort of related members
of a monitored population, when is then used 3) to 'generate an inference ...
of ... an act of collusion"' (App. Br. 11 ). But, we are not persuaded that
claim 1 represents any technological improvement. Instead, it appears clear,
when considered in light of the Specification, that the focus of the claimed
invention, as recited in claim 1, is on achieving a business objective (i.e.,
monitoring a customer population to detect potential wrongdoing by
identifying members of the monitored population who may collaborating on
a plan to perform an act of collusion), and not on any claimed means for
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achieving that goal that improves technology. See, e.g., Spec. ,r,r 4, 5, 23,
24.
Finally, we cannot agree with Appellants that the Examiner failed to
follow USPTO guidelines or otherwise attempted to impermissibly expand
the scope of Alice (App. Br. 11-12; see also id. at 15-16). Appellants
ostensibly maintain that claim 1 is not directed to an abstract idea because
the claimed subject matter is dissimilar from the concepts the USPTO
identified as abstract on its July 2015 Update: Interim Eligibility Guidance
Quick Reference Sheet4 (App. Br. 11-12). Yet, even if true, that is no basis
for concluding that the Examiner erred in determining that claim 1 is
directed to an abstract idea. The USPTO guidance, including the Quick
Reference Sheet, is intended as a tool to assist examiners in determining
subject matter eligibility under § 101. But there is nothing in the guidance
that precludes an examiner from determining that a claim is directed to an
abstract idea unless it is similar to a concept identified on the Quick
Reference Sheet. We also are aware of no controlling precedent, nor for that
matter do Appellants identify any precedent, that precludes an examiner
from determining that a claim is directed to an abstract idea unless it is
similar to a concept that a court has previously identified explicitly as an
abstract idea. 5
4 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-qrs.pdf.
5 We also note, for the record, that an Examiner's failure to follow the
Director's guidance is appealable only to the extent that the Examiner has
failed to follow the statutes or case law. To the extent the Director's
guidance goes beyond the case law and is more restrictive on the Examiner
than the case law, the failure of the Examiner to follow those added
restrictions is a matter for petition to the Director.
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Responding to the Examiner's Answer in the Reply Brief, Appellants
attempt to draw an analogy between the present claims and the claims at
issue in McRO (Reply Br. 4). Appellants argue that, as in McRO, "[t]he
present invention provides 'a particular way' to achieve a desired outcome
defined by the claimed invention' and is clearly more than 'collecting and
analyzing information"' (id.). But, the Federal Circuit premised its
determination that the claims in McRO were patent-eligible on the fact that
the claims, when considered as a whole, were directed to a technological
improvement over the existing, manual 3-D animation techniques and used
limited rules in a process specifically designed to achieve an improved
technological result in conventional industry practice, and not merely on the
specificity of the claimed animation scheme. We are not persuaded, as
described above, that claim 1 provides a comparable improved
"technological" result.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection of claim 1 and claims 2-14, 19, and 20, which fall with
claim 1.
Independent claim 15 and Dependent claims 16--18
Appellants' arguments with respect to claims 15-18 are substantially
identical to Appellants' arguments with respect to claim 1 (App. Br. 13-16),
and are similarly unpersuasive of Examiner error. As in Alice "[t ]he method
claims [ e.g., claim 1] recite the abstract idea implemented on a generic
computer" and apparatus claim 15 recites "a handful of generic computer
components [i.e., a bus system, a memory, and a processing unit connected
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to the bus system] configured to implement the same idea." Alice, 134 S. Ct.
at 2360.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 15-18 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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