Ex Parte Beller et al

Patent Trials and Appeals Board

Apr 10, 2019

15152906 - (D) (P.T.A.B. Apr. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/152,906 05/12/2016 Charles E. Beller
50170 7590 04/10/2019
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17304 PRESTON ROAD
SUITE 200
DALLAS, TX 75252
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.
AUS920160126US1 5973
EXAMINER
BLANKENAGEL, BRYANS
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
04/10/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES E. BELLER, MICHAEL DRZEWUCKI,
CHRISTOPHER PHIPPS, KRISTEN M. SUMMERS, and JULIE T. YU
Appeal2018-006872
Application 15/152,906 1
Technology Center 2600
Before CATHERINE SHIANG, JOHN P. PINKERTON, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-10 and 14--23, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2018-006872
Application 15/152,906
STATEMENT OF THE CASE
Introduction
The present invention "relates generally to an improved data
processing apparatus and method and more specifically to mechanisms for
identifying nonsense passages in a question answering system based on
domain specific policy." Spec. ,r 2. Claim 1 is exemplary:
1. A method, in a data processing system comprising at
least one processor and at least one memory, the at least one
memory comprising instructions executed by the at least one
processor to cause the at least one processor to implement a
question answering cognitive system, the method comprising:
receiving, by the question answering cognitive system, an
input question from a user;
obtaining, by the question answering cognitive system, a
set of evidence passages for forming candidate answers to the
input question from a corpus;
annotating, by an annotator in a nonsense identification
component within the question answering cognitive system, a
given evidence passage in the set of evidence passages with
linguistic features to form an annotated passage, wherein a
domain-specific policy is associated with a domain of the
corpus;
counting, by a metric counters component in the
nonsense identification component, a number of instances of
each type of linguistic feature in the annotated passage to form
a set of feature counts;
determining, by the metric counters component of the
nonsense identification component, a value for a metric based
on the set of feature counts, wherein the metric is specified in
the domain-specific policy;
comparing, by a comparator component of the nonsense
identification component, the value for the metric to a
predetermined model threshold, wherein the threshold is
specified in the domain-specific policy;
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Appeal2018-006872
Application 15/152,906
determining, by a filter component of the nonsense
identification component, whether the given evidence passage
is a nonsense passage based on a result of the comparison;
responsive to the filter component determining the given
evidence passage is a nonsense passage, sending, by the filter
component of the nonsense identification component, the given
evidence passage to a semi-structured data pipeline of the
question answering cognitive system and preventing the given
evidence passage from proceeding in the natural language
processing pipeline;
responsive to the filter component not determining that
the given evidence passage is a nonsense passage, passing, by
the filter component, the given evidence passage to the natural
language processing pipeline;
generating, by a hypothesis generating component of the
question answering cognitive system, a set of candidate answers
to the input question based on results of the semi-structured
data pipeline and the natural language processing pipeline;
ranking, by an answer ranking component of the question
answering cognitive system, the set of candidate answers to
form a ranked set of candidate answers; and
outputting, by the question answering cognitive system,
the ranked set of candidate answers to the user.
Rejection2
Claims 1-10 and 14--23 are rejected under 35 U.S.C. § 101 because
they are directed to patent-ineligible subject matter. Final Act. 3---6. 3
2 Throughout this opinion, we refer to the ( 1) Final Office Action dated
August 2, 2017 ("Final Act."); (2) Appeal Brief dated December 28, 2017
("App. Br."); (3) Examiner's Answer dated April 18, 2018 ("Ans."); and
( 4) Reply Brief dated June 18, 2018 ("Reply Br.").
3 The Examiner's objection to the Specification (Final Act. 3) is not before
us.
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Application 15/152,906
ANALYSIS
35 us.c. § 101
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
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Application 15/152,906
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
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If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the
guidance set forth in the 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, or mental processes) (Step 2A, Prong 1 ); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h)) (9th ed., rev.
08.2017, 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(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
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54--56.
Turning to Step 2B of the Guidance, "[t]he second step of the Alice
test is satisfied when the claim limitations 'involve more than performance
of []well-understood, routine, [and] conventional activities previously
known to the industry."' Berkheimerv. HP Inc., 881 F.3d 1360, 1367 (Fed.
Cir. 2018) ( quoting Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) and
Alice, 573 U.S. at 225). "Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination." Berkheimer, 881 F.3dat 1369.
In this case, Appellants argue with respect to the Alice step-two
analysis,
The Examiner has not established that the claims fail to recite
significantly more than the abstract idea as a matter of fact.
Accordingly, the rejection is in error.
The USPTO memorandum set forth four ways to provide
support for an allegation of a claimed element being well-
understood, routine, or conventional, none of which have been
satisfied by the Examiner's Answer. The four ways are as
follows: (1) cite an express statement in the specification or to a
statement made by an appellant during prosecution that
demonstrates the well-understood, routine, conventional nature
of the additional elements; (2) a citation to one or more court
decisions discussed in MPEP § 2106.05(d)(II) as noting the
well-understood, routine, conventional nature of the additional
elements; (3) a citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
elements; and (4) a statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
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Application 15/152,906
the additional elements. The Examiner has not satisfied any of
these four ways of establishing additional elements as being
well-understood, routine, or conventional and, thus, has not
presented a prima facie case.
Reply Br. 6. 4
Because the Examiner has not provided sufficient evidence required
by Berkheimer (Berkheimer, 881 F.3d at 1369), the Examiner erred with
respect to Step 2B of the Guidance, and we are constrained by the record to
reverse the Examiner's rejection of claims 1-10 and 14--23 on procedural
grounds.
DECISION
We reverse the Examiner's decision rejecting claims 1-10 and 14--23.
REVERSED
4 Because the Federal Circuit issued the Berkheimer decision after
Appellants filed the Appeal Brief, Appellants had good cause to raise
arguments based on Berkheimer in the Reply Brief.
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