Ex Parte Angell et al

Patent Trials and Appeals Board

Mar 21, 2019

12336488 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/336,488 12/16/2008 Robert Lee Angell
79230 7590 03/25/2019
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.
END920080334US 1 1988
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3600
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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
Appeal2018-000454 1
Application 12/336,4882
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, 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 1-10 and 16-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
June 14, 2017) and Reply Brief ("Reply Br.," filed October 17, 2017), and
the Examiner's Answer ("Ans.," mailed August 17, 2017) and Final Office
Action ("Final Act.," mailed November 18, 2016).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2018-000454
Application 12/336,488
CLAIMED INVENTION
Appellants' claimed invention "relates generally to an improved data
processing system and in particular to a method and apparatus for generating
cohorts" (Spec. ,r 1 ).
Claims 1, 16, and 20 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprising:
[(a)] responsive to receiving an identification of a
proposed future change in a current set of professional or
commercial circumstances associated with a set of individuals,
retrieving, by one or more processors, digital sensor data
associated with the set of individuals, wherein the digital sensor
data comprises events metadata describing a set of events
associated with the set of individuals, wherein the set of events
comprises at least one of body language, facial expressions,
vocalizations, and social interactions of the set of individuals,
and wherein the digital sensor data is generated by a set of
hardware biometric sensors;
[ (b)] selecting, by one or more processors, a set of
receptivity analysis models based on the proposed future change
and the set of events, wherein each analysis model in the set of
receptivity analysis models analyzes the set of events to identify
conduct attributes indicating receptiveness of each individual in
the set of individuals to the proposed future change;
[ ( c)] receiving, by one or more processors, a request for
a generation of a set of cohorts based on the digital sensor data;
[ ( d)] in response to receiving the request for the
generation of the set of cohorts based on the digital sensor data,
analyzing, by one or more processors, the events metadata
describing the set of events in the selected set of receptivity
analysis models to form a receptivity cohort, wherein the
receptivity cohort comprises a set of conduct attributes indicating
receptiveness of the set of individuals to the proposed future
change; and
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[ ( e)] transmitting, by one or more processors, the
receptivity cohort to a sender of the request.
REJECTION
Claims 1-10 and 16-20 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
ANALYSIS
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, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
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., 573 U.S. at 217.
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).
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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)).
Independent Claim 1 and Dependent Claims 2-10
In rejecting claims 1-10 under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to "managing the reception of
individual reactive/receptive data by means of an analysis model to analyze
sets of event data ... indicating receptiveness of individuals and to form a
receptivity cohort comprising a set of conduct attributes indicating
receptiveness of individuals to a future change," which the Examiner
concluded is, inter alia, a method of organizing human activity and,
therefore, an abstract idea (Final Act. 6). The Examiner also determined that
the claims do not include additional elements that amount to significantly
more than the abstract idea itself (id.).
Focusing first on step one of the Mayo/Alice framework, we are not
persuaded that the Examiner erred in determining that claim 1 is directed to
an abstract idea. The Federal Circuit has explained that "the 'directed to'
inquiry applies a stage-one filter to claims, considered in light of the
[S]pecification, based on whether 'their character as a whole is directed to
excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d at 1346). It
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asks whether the focus of the claims is on a specific improvement in relevant
technology or on a process that itself qualifies as an "abstract idea" for
which computers are invoked merely as a tool. See id. at 1335-36. Here,
the Specification, including the claim language, make clear that the claims
focus on an abstract idea, and not on any improvement to computer
technology and/or functionality.
The Specification is entitled "GENERATING RECEPTIVITY
COHORTS," and discloses that the "present invention relates ... in
particular to a method and apparatus for generating cohorts," i.e., a group of
members selected based on a commonality of one or more attributes
(Spec. ,r,r 1, 2). The Specification describes, in the "Description of The Prior
Art" section, that the effectiveness of cohort studies depends on a number of
different factors (e.g., the length of time that the members are observed, and
the ability to identify and capture relevant data for collection) and that the
information needed to identify attributes of potential members of a cohort
may be voluminous, dynamically changing, unavailable, difficult to collect,
and/or unknown to the members of the cohort and/or the user selecting
cohorts (id. ,r 2). According to the Specification, it also may be difficult,
time consuming, or impractical for an individual to access all the
information necessary to accurately generate cohorts (id.). "Thus, unique
cohorts may be sub-optimal because individuals lack the skill, time,
knowledge, and/or expertise needed to gather cohort attribute information
from available sources" (id.).
The claimed invention is ostensibly intended to address this problem
by providing a computer implemented method, apparatus, and computer
program product for generating receptivity cohorts (id. ,r 3). The
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Specification, thus, discloses that digital sensor data associated with a set of
individuals are retrieved in response to receiving an identification of a
proposed future change in a current set of circumstances associated with the
set of individuals (id.). The digital sensor data comprise events metadata
describing a set of events associated with the set of individuals, i.e., at least
one of body language, facial expressions, vocalizations, and social
interactions of the set of individuals (id.). This set of events is analyzed to
identify conduct attributes indicating the receptiveness of each individual in
the set of individuals to the proposed future change (id.). The receptivity
cohort is then generated to include those individuals identified as receptive
to the proposed change (id.).
Understood in light of the Specification, claim 1 is directed to
( 1) receiving information, i.e., "receiving an identification of a proposed
future change in a current set of professional or commercial circumstances
associated with a set of individuals" and "retrieving ... digital sensor data
comprises events metadata describing a set of events associated with the set
of individuals" (step (a)); (2) analyzing the information, i.e., "selecting ... a
set of receptivity analysis models [that] analyzes the set of events to identify
conduct attributes indicating receptiveness of each individual in the set of
individuals to the proposed future change" (step (b )); (3) receiving
additional information, i.e., "receiving ... a request for a generation of a set
of cohorts based on the digital sensor data" ( step ( c) ); ( 4) generating a set of
cohorts of individuals having conduct attributes indicating receptiveness to
the proposed future change, i.e., "analyzing ... the events metadata
describing the set of events in the selected set of receptivity analysis models
to form a receptivity cohort" (step (d)); and (5) transmitting the
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receptiveness cohort to the requester, i.e., "transmitting ... the receptivity
cohort to a sender of the request" ( step ( e)). In other words, claim 1 is
directed to (1) collecting, analyzing, and categorizing information, i.e., data
regarding individual reactions to a proposed future change to identify and
generate a cohort of individuals receptive to the proposed change, and
(2) transmitting the results of the collection, analysis, and categorization,
i.e., the generated cohort, to an individual requester. In this context, claim 1
is directed to managing personal behavior or relationships or interactions
between people, which is a method of organizing human activity and,
therefore, considered an abstract idea. See 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
("Revised Guidance").
The Federal Circuit has consistently held that abstract ideas include
the concepts of collecting data, analyzing the data, and displaying the results
of the collection and analysis, including when limited to particular content.
See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting,
displaying, and manipulating data); Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting
information, analyzing information by steps people go through in their
minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas); see also SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1168 (Fed. Cir. 2018) ("As many cases make clear, even if a
process of collecting and analyzing information is 'limited to particular
content' or a particular 'source,' that limitation does not make the collection
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and analysis other than abstract." (quoting Elec. Power Grp., 830 F.3d
at 1353, 1355 (citing cases)). Generating cohorts, i.e., forming a group of
members based on a commonality of attributes, also is a commonly known
practice (Spec. ,r 2), and is substantially similar to other practices that the
courts have held abstract. See, e.g., In re TL! Commc 'ns LLC Patent Litig.,
823 F.3d 607, 613 (Fed. Cir. 2016) (holding that claims to the concept of
classifying and storing digital images based on their classification are
directed to an abstract idea); Cyberfone Systems, LLC v. CNN Interactive
Group, Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014) (non-precedential)
(holding that "using categories to organize, store, and transmit information is
well-established" and that "the well-known concept of categorical data
storage, i.e., the idea of collecting information in classified form, then
separating and transmitting that information according to its classification, is
an abstract idea that is not patent-eligible").
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in claim 1 invoke any assertedly
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See 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.").
We also find nothing in the Specification to indicate that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
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argument, that attributes an improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a "practical application,"
as that phrase is used in the Revised Guidance. 3
Ostensibly focusing on step two of the Mayo/Alice framework,
Appellants argue that the rejection of claims 1-10 under § 101 is improper
and cannot be sustained because the claimed invention is "inextricably
intertwined with hardware technology and the improvement thereof' (App.
Br. 5) (emphasis omitted). Citing the USPTO's November 2, 2016
Memorandum to the Patent Examining Corps regarding "Recent Subject
3 We note that Appellants' briefs were filed, and the Examiner's Answer
mailed, before the USPTO issued the Revised Guidance, which, by its terms,
applies to all applications, and to all patents resulting from applications, filed
before, on, or after January 7, 2019. In accordance with the Revised
Guidance, a claim is generally considered "directed to" an abstract idea if
(1) the claim recites subject matter falling within one of the following
groupings of abstract ideas: (a) mathematical concepts; (b) certain methods
of organizing human activity, e.g., fundamental economic principles or
practices, commercial or legal interactions; and ( c) mental processes, and
(2) the claim does not integrate the abstract idea into a practical application,
i.e., apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the clam is more than a
drafting effort designed to monopolize the judicial exception. See Revised
Guidance, 84 Fed. Reg. at 54--55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP") §§ 2106.05(a}-(c)
and (e}-(h) in describing the considerations that are indicative that an
additional element or combination of elements integrates the judicial
exception, e.g., the abstract idea, into a practical application. Id. at 55. If
the recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
"directed to" the judicial exception.
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Matter Eligibility Decisions", 4 Appellants direct our attention to Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) for
support (App. Br. 5-6). But, we can find no parallel between independent
claim 1 and the claim at issue in Amdocs.
In Amdocs, the Federal Circuit held the claim was patent eligible
because the claim entails an unconventional technological solution
( enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases).
Although the solution requires generic components, the court determined
that "the claim's enhancing limitation necessarily requires that these generic
components operate in an unconventional manner to achieve an
improvement in computer functionality" and that the "enhancing limitation
depends not only upon the invention's distributed architecture, but also
depends upon the network devices and gatherers - even though these may
be generic - working together in a distributed manner." Amdocs, 841 F .3d
at 13 00--0 1.
Appellants assert that, as in Amdocs, the present invention "'entails an
unconventional technological solution' of forming a 'receptivity cohort' that
includes a set of 'conduct attributes indicating receptiveness of the set of
individuals to the proposed future changes' based on digital sensor data ...
thereby improving the function of the overall system" (App. Br. 5---6). But,
Appellants do not identify any "distributed architecture" comparable to that
in Amdocs or otherwise establish that the generic components recited in
claim 1 operate in an unconventional manner. Appellants also do not
4 Available at https://www.uspto.gov/sites/default/files/documents/McRo-
Bascom-Memo.pdf
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identify any "technological problem" that claim 1 allegedly solves. Indeed,
it clearly appears from the Specification that using digital sensor data
( collected for a set of individuals) to form a receptivity cohort is not
intended to solve a technological problem but rather is intended to address
the business challenges involved in collecting the information needed to
accurately generate a desired cohort (see Spec. ,r 2 ( describing that the
information needed or wanted to identify attributes of potential members of
a cohort may be voluminous, dynamically changing, unavailable, difficult to
collect, and/or unknown to the members of the cohort and/or the user
selecting cohorts; that it may be difficult, time consuming, or impractical for
an individual to access all the information necessary to accurately generate
cohorts; and that unique cohorts may be sub-optimal because individuals
lack the skill, time, knowledge, and/or expertise needed to gather cohort
attribute information from available sources)).
We also do not agree with Appellants that any analogy exists between
independent claim 1 and the claims at issue in Enfish (App. Br. 6-7). There,
the Federal Circuit rejected a§ 101 challenge at the step one stage of the
Mayo/Alice analysis because the claims at issue 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 stores and retrieves data in
memory." Enfish, 822 F.3d at 1339. Based on the "plain focus of the
claims," the court, thus, held that the claims were directed to "a specific
improvement to the way computers operate, embodied in the self-referential
table," and, as such, were more than a mere abstract idea. Id. at 1336.
Appellants assert here that the present invention, similar to the
claimed invention in Enfzsh, is directed to a system that "improves the
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computer-related technology of data retrieval by generating a 'receptivity
cohort' in response to receiving a request for the generation of a set of
cohorts based on the digital sensor data" (App. Br. 6-7). But Appellants do
not explain how, and we fail to see how, collecting data using biometric
sensors amounts to an technological improvement where, as here, there is no
indication that the sensors are other than generic components used in their
normal, routine, and ordinary capacity. We find no parallel here between
claim 1 and the claims in Enfzsh nor any comparable aspect in claim 1 that
represents an improvement to computer functionality.
We also are not persuaded by Appellants' further argument that
claim 1 is patent-eligible because the claim requires the use of "non-
computer devices," i.e., "hardware biometric sensors" (App. Br. 7).
Although claim 1 recites "retrieving ... digital sensor data associated with
the set of individuals, ... wherein the digital sensor data is generated by a
set of hardware biometric sensors," the focus of the claim is not on any
improvement to sensor technology, but instead on implementation of the
abstract idea, i.e., forming a receptivity cohort that includes a set of
attributes indicating receptiveness of the set of individuals to a proposed
future change. Indeed, the Specification expressly describes that the sensor
data may include "sensor input in the form of audio data, images from a
camera, biometric data, signals from sensors and actuators, and/or olfactory
patterns from an artificial nose or other chemical sensor" (Spec. ,r 42)- in
other words, these are generic components used in their ordinary capacity to
collect information.
Responding to the Examiner's Answer, Appellants attempt to draw an
analogy between the present invention and the claimed invention in
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BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016), arguing in the Reply Brief that, similar to the
situation in BASCOM, the present invention includes a client sending a
request to a server to generate a set of cohorts, according to the parameters
set by the sensor readings and that the server then forms a "receptivity
cohort" based on digital sensor data, and sends it to the client (Reply Br. 3).
Appellants maintain that this improves the function of the overall system by
"1) reducing the processing requirements of the client and 2) reducing the
bandwidth consumption between the server and the client by sending only
the receptivity cohort that comports with the parameter set by the client ('set
of cohorts based on the digital sensor data')." Id. But, we find nothing in
the Specification, nor do Appellants us direct to anything in the
Specification, that attributes any reduction in client processing requirements
or any reduction in bandwidth consumption to the claimed invention.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-10 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
Independent Claims 16 and 20 and Dependent Claims 17-19
Appellants' arguments with respect to claims 16-20 are substantially
identical to Appellants' arguments with respect to claims 1-10, and are
similarly unpersuasive (App. Br. 8-10). Therefore, we sustain the
Examiner's rejection of claims 16-20 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1-10 and 16-20 under 35 U.S.C.
§ 101 is affirmed.
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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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