Ex Parte Bellotti et al

Patent Trial and Appeal Board

Mar 29, 2018

13171087 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/171,087 06/28/2011 Victoria M. Bellotti
35699 7590 04/02/2018
PVF--PARC
c/o PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 FIFTH STREET
DAVIS, CA 95618-7759
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.
PARC-20101194-US-NP 4926
EXAMINER
DELI CH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
sy _incoming@parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTORIA M. BELLOTTI, OLIVER BRDICZKA,
and LAURIAN CLAIRE VEGA
Appeal2016-007171
Application 13/171,087
Technology Center 3600
Before: MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-27, which are all the claims pending in this
application. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify Palo Alto Research Center, Incorporated, as the real
party in interest. App. Br. 1.
Appeal2016-007171
Application 13/171,087
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to managing human-specified activities.
Spec. ,-r 1.
Exemplary Claim
Claim 1 is exemplary and illustrative of the invention and reads as
follows:
1. A computer-executable method for identifying
user activities, the method comprising:
collecting, by a computer, activity descriptions from one
or more computing devices associated with a plurality of users,
wherein a respective activity description indicates at least one
feature, from a viewpoint of one or more users, for an activity
associated with the viewpoint, and wherein a viewpoint
indicates a type of entity describing an activity;
identifying a user activity for a respective viewpoint,
wherein the user activity includes a typed, stateful, and
instantiated entity, and indicates a type of activity being
performed by a user of the respective viewpoint, and wherein
identifying the user activity involves:
selecting one or more activity descriptions
associated with a plurality of user activities of the
respective viewpoint;
computing a score for a respective feature of an
activity description that is weighted according to a
historical correlation of the respective feature with
respect to a respective user activity versus a historical
correlation of the respective feature with other activities;
computing a score for the respective user activity,
based on the weighted scores for the respective features
of the corresponding activity descriptions; and
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determining, from the plurality of user activities, a
user activity whose computed score is greater than a
predetermined threshold; and
generating an activity model for the identified activity
based on the activity description features that are associated
with the identified activity and the respective viewpoint.
The Examiner's Rejections
Claims 1-27 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. See Final Act. 5-7.
Claims 1--4 and 6-27 stand rejected under 35 U.S.C. § 103(a) for
being unpatentable over Feinsmith (US 2005/0182773 Al; pub. Aug.18,
2005), Cohen et al. (US 2003/0115333 Al; pub. June 19, 2003) (hereinafter
"Cohen"), and Kargupta (US 2010/0017870 Al; pub. Jan. 21, 2010). See
Final Act. 8-27.
Claim 5 stands rejected under 35 U.S.C. § 103(a) forbeing
unpatentable over Feinsmith, Cohen, Kargupta, in view of Chung et al. (US
2007 /0239517 Al; pub. Oct. 11, 2007) (hereinafter "Chung") and Bhaskaran
(US 2010/0125911 Al; pub. May 20, 2010). See Final Act. 27-28.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the briefs that the Examiner has erred. We are unpersuaded by
Appellants' contentions and concur with the findings and conclusions
reached by the Examiner as explained below.
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Rejection Under 35 US.C. § 101
With regard to the Examiner's rejection under 35 U.S.C. § 101, we
disagree with Appellants' arguments, and agree with and adopt the
Examiner's findings and conclusions in: (i) the action from which this
appeal is taken (Final Act. 5-7); and (ii) the Answer (Ans. 2---6) to the extent
they are consistent with our analysis below.
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 5. The
Examiner specifically finds the claims are directed to the abstract idea of a
mathematical formula or algorithm for computing scores. See id. The
Examiner further finds the claims use generic computer components to
perform generic computer functions, which "do not provide meaningful
limitations to transform the abstract idea into a patent-eligible application of
the abstract idea such that the claims amount to significantly more than the
abstract idea itself." See id. at 5-6. Appellants argue the Examiner erred.
See App. Br. 14--23; see also Reply Br. 9-15.
Appellants have not persuaded us of error. 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. That provision "contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (quoting Association for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). According to the
Supreme Court:
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[W]e set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those
concepts. First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts .... If so, we
then ask, "[ w ]hat else is there in the claims before us?" ... To
answer that question, we consider the elements of each claim
both individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application .... We have described
step two of this analysis 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."
Alice Corp., 134 S. Ct. at 2355. The Federal Circuit has described the Alice
step-one inquiry as looking at the "focus" of the claims, their "character as a
whole," and the Alice step-two inquiry as looking more precisely at what the
claim elements add-whether they identify an "inventive concept" in the
application of the ineligible matter to which the claim is directed. See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016); and Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has "treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas."
Electric Power, 830 F.3d at 1353 (emphasis added); see also Internet
Patents, 790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015); and Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir.
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2014). "In a similar vein, we have treated analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category."
Electric Power, 830 F.3d at 1354 (emphasis added); see also In re TL!
Commc'ns. LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). "And we
have recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis." Electric Power, 830 F.3d at 1354 (emphasis
added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15
(Fed. Cir. 2014).
Appellants' assertions regarding contrasting the claims with those in
Digitech and SmartGene are not persuasive either. We are cognizant that in
determining whether a process claim recites an abstract idea, we must
examine the claim as a whole, keeping in mind that an invention is not
ineligible just because it relies upon a law of nature or mathematical
algorithm (see Digitech Image Techs., LLC v. Electronics for Imaging, Inc.,
758 F.3d 1344, 1350 (Fed. Cir. 2014)) or compares new and stored
information. See SmartGene, Inc. v. Advanced Biological Labs., SA, 555
Fed. Appx. 950, 955 (Fed. Cir. 2014). However, the rejected claims "fall
into a familiar class of claims 'directed to' a patent-ineligible concept."
Electric Power, 830 F.3d at 1353. Contrary to Appellants' arguments (App.
Br. 16-19; see also Reply Br. 9), the claims are similar to the claims of
Electric Power, and are focused on the combination of abstract-idea
processes or functions. See Electric Power, 830 F.3d at 1354. For example,
claim 1 is directed to collecting information ("collecting, by a computer,
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activity descriptions"), analyzing (including generating) information
("identifying a user activity for a respective viewpoint"), and presenting
information ("generating an activity model"). App. Br. 52, Claims App.
Similarly, independent claims 10 and 18 are directed to collecting
information, analyzing (including generating) information, and presenting
information. See Electric Power, 830 F.3d at 1353. The dependent claims
are directed to similar functions or processes, and Appellants have not
shown such claims are directed to other non-abstract functions or processes.
See App. Br. 53-55, 56-58, and 59---61, Claims App. As a result, we agree
with the Examiner that the claims are directed to abstract functions or
processes for performing financial transactions.
Regarding Alice step two, contrary to Appellants' assertion (App. Br.
19-23; see also Reply Br. 9-11 ), Appellants have not shown the claims in
this case require an arguably inventive set of components or methods, or
invoke any assertedly inventive programming. See Electric Power, 830 F.3d
at 1355. Furthermore, the claims are similar to the claims of Electric Power,
because they do not require any nonconventional computer components, or
even a "non-conventional and non-generic arrangement of known,
conventional pieces," but merely call for performance of the claimed
information collection and analysis functions on generic computer
components. See Electric Power, 830 F.3d at 1355; see also App. Br. 52
(Claim 1 (reciting "[a] computer-executable method," "by a computer")),
55-56 (Claim 10 (reciting "[a] non-transitory computer-readable storage
medium")), and 58-59 (Claim 18 (reciting "[a] system ... comprising: a
processor; a memory; a collecting mechanism")). The dependent claims call
for similar generic components and devices, and Appellants have not shown
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those claims require any non-conventional components or devices. See App.
Br. 53-55, 56-58, and 59---61, Claims App.
Contrary to Appellants' assertion (App. Br. 19-21), the claims are not
similar to those inDiamondv. Diehr, 450 U.S. 175, 177-78 (1981) because
they do not recite "a process designed to solve a technological problem 'in
conventional industry practice."' See Ans. 5; see also App Br. 19-20.
Claim 1 recites collecting information on user activities and processing the
information to generate a different type of information. The Examiner has
identified subject matter in claim 1 that is similar to subject matter found by
our reviewing courts to be abstract. The Examiner has determined that each
of the limitations of claim 1 is directed to at least one of the following
previously established abstract ideas: (1) an idea itself that can be performed
in the human mind or by a human using a pen and paper (see Cybersource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)); (2)
comparing new and stored information and using rules to identify options
(see SmartGene); (3) organizing information (see Digitech; see also
Cyberfone Sys., LLC v. CNN Interactive Grp., 558 F. Appx. 988 (Fed. Cir.
2014); Content Extraction, 776 F.3d at 1358-59; and (4) mathematical
concepts such as mathematical algorithms, mathematical relationships,
mathematical formulas and calculations (see Gottschalk v. Benson, 409 U.S.
63 (1972); Parker v. Flook, 437 U.S. 584 (1978); and Diamond v. Diehr,
450 U.S. 175 (1981)).
Similarly, Appellants' argument that the rejected claims require more
than simply retrieving and combining data does not address the Examiner's
specific reasoning and does not persuade us of Examiner error. App. Br. 22,
23 (citing Research Corp. Techs., Inc., v. Microsoft Corp., 627 F.3d 859,
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868-869 (2010)). This argument is unpersuasive because it is conclusory
and unsupported by specific analysis of the technology in these cases and
any persuasive evidence or argument concerning any similarities of such
technology with the subject matter of claim 1. Appellants argue claim 18 is
directed to a system that "collects activity descriptions from multiple users
to identify and detect a user's activity," but does not explain how such
collection of activity description is based on improvements to computer
technology, rather than the mathematical algorithms to determine "an
activity model" based on "activity description." App. Br. 22-24.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1-27 under 35 U.S.C. § 101.
Rejection Under 35 US.C. § 103
Independent Claim 1
Appellants argue the Examiner has failed to specifically identify any
disclosure in the cited references that would teach or suggest all the recited
features in claim 1. App. Br. 21--40; see also Reply Br. 15-21. Appellants
specifically argue the deficiencies related to the user activity, computing a
score, and generating an activity model, the Examiner identified in
Feinsmith are such that modifying the reference teachings with Cohen,
Kargupta, and Chung would not have resulted in in the claimed subject
matter. App. Br. 28-32. With respect to Cohen, Appellants contend the
cited portion describes how a user or administrator defines tasks rather than
the claimed identifying user activity based on activity description and
features. App. Br. 32-33 (citing Cohen Abstract, i-fi-19, 66, 222-227, and
Fig. 4 ). Regarding Kargupta, Appellants assert the reference relates to
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privacy-preserving algorithms, and not the recited computing a score based
on historical correlation of user activities. App. Br. 34--35 (citing Kargupta
Abstract, i-fi-f 182, 195). Appellants further argue Chung's system generates
the weight parameters related to user behavior rather than the claimed
historical correlation. App. Br. 35-37 (citing Chung i-f 125).
Appellants' contentions do not persuade us of Examiner error because
Appellants' arguments do not address the Examiner's specific findings.
First, the Examiner finds the broadest reasonable interpretation of
"identifying a user activity" does not necessarily require that an activity is
performed by a user or a real time detection of such activity is made. Ans.
6-7. Second, we agree with the Examiner that nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Keller, 642
F.2d 413, 425 (CCPA 1981); see also In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). We agree with and adopt the Examiner's
findings related to each reference and that the combination of Cohen,
Kargupta, and Chung with Feinsmith teaches or suggests the disputed
limitations. See Ans. 7-10.
Appellants next contend that the proposed combination would change
the principle of operation of Feinsmith. App. Br. 38-39. Appellants
specifically argue
Chung merely discloses generating weight parameters from a
user data set that correlates event information with past user
activity. Generating weight parameters from data that
correlates events with past user activity is not the same as
weighting a score computed for a respective feature of an
activity description that is weighted according to a historical
correlation of the respective feature with respect to a respective
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user activity versus a historical correlation of the respective
feature with other activities.
App. Br. 38. Appellants assert Chung' system does not "compute a score for
a respective feature of an activity description that is weighted according to a
historical correlation of the respective feature with respect to a respective
user activity versus a historical correlation of the respective feature with
other activities" and instead "is limited to compiling past user activity to
create a user data set." App. Br. 39.
Regarding the alleged change in the principle of operation of
Feinsmith, we also agree with the Examiner's findings and conclusion and
adopt them as our own. See Ans. 10. As explained by the Examiner,
"[ u ]tilizing additional analysis, calculation and entity information does not
in any way disable the principle function of activity management that is
performed by Feinsmith" because it would have been obvious to modify
F einsmith "to include the techniques for weighting data using correlations
because the combination enables the system to analyze and determine
events, features and activities that provide the greatest contribution and thus
will most significantly impact the score." Id. Furthermore, the skilled
artisan is "a person of ordinary creativity, not an automaton," and this is a
case in which the skilled artisan would "be able to fit the teachings of
multiple patents together like pieces of a puzzle." KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 420, 421 (2007).
For the above-stated reasons, we are not persuaded by Appellants'
arguments that the Examiner erred in finding the combination of Feinsmith
with Cohen, Kargupta, and Chung teaches or suggests the disputed features
of claim 1. Therefore, we sustain the 35 U.S.C. § 103(a) rejection of claim
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1, independent claims 10 and 18, and dependent claims 2--4, 7, 11-17, and
19-27, which are argued based on the same reasons stated in arguing the
patentability of claim 1. See App. Br. 40.
Dependent Claims 5, 6, 8, and 9
Claim 5 depends from dependent claim 4, which depends from claim
1, and requires "detecting an activity instance based on a personal
viewpoint; and detecting an activity type based on a group viewpoint." App.
Br. 53, Claims App. Claims 19 and 23 require similar features related to the
first and second cameras. Appellants argue the patentability of claim 5 by
alleging Bhaskaran fails to teach or suggest the disputed feature because the
reference is concerned with group risk ranking to be used to rate risk of
activities of the user. App. Br. 41.
The Examiner has presented detailed findings with respect to the
applied prior art references, including "Feinsmith teaches a collection of
activity descriptions for a particular user's viewpoint of the activities but
does not explicitly recite a group viewpoint" and that "Bhaskaran teaches in
at least [0013, 0032, 0053-0054, and 0067] a group risk ranking profile,
which is considered a viewpoint of the risk for a group because it identifies a
type of activity according to one or more group profiles." Ans. 11. Similar
to our discussion of Claim 1 above, we also agree with the Examiner's
findings regarding the teachings of Bhaskaran and the stated rationale that it
would have been obvious to one of ordinary skill in the art to further
improve the user activity description by including data from multiple users
and group viewpoints in order to reduce risk. See id.
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Claim 6 depends from independent claim 1 and requires "receiving a
feature-evaluation from a user, wherein the feature-evaluation indicates an
activity feature to add to, remove form, or rank within the collection of
activity descriptions" and "updating the collection of activity descriptions
based on the received feature-evaluation." App. Br. 54, Claims App.
Appellants contend the patentability of claim 6 based on arguments similar
to those presented for claim 1 regarding the teachings of Cohen. App. Br.
42--45. Similar to our discussion of Cohen above, we also agree with the
Examiner's findings that
Cohen teaches receiving an analysis of user and task associated
steps. In at least [0038-0039, 0065-0069, 0251-0253] and at
least Table 2 Cohen describes a task analysis that describes
analyzing tasks and activities and the ability to order task paths
in terms of dominance. Ordering tasks based on dominance is
considered a ranking since it places the tasks in a particular
sequence based on a particular value, such as dominance. The
steps of the task are interpreted as the features of a task or
activity because they represent actions associated with the task
or activity and thus meet the broadest reasonable interpretation
of the claim.
Ans. 12. We also agree with the Examiner's stated reason for modifying
Feinsmith as stated below:
Therefore, it would be obvious to modify the ability to input
data indicates the ability to add, remove or rank descriptions
and update a collection to include the techniques for receiving
such information from a user from an analysis because by
combining the evaluation of up to date activity data the
combination enables a more accurate analysis that improves the
effectiveness of the business by measuring how efficiently
users accomplish their goals (Cohen [0004 and 0009]).
Id. We understand the Examiner's position to be based on combining
Cohen's ordering tasks based on dominance as an action associated with the
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task or activity which would be included in the collecting system of
Feinsmith, rather than bodily incorporation of such, as argued by Appellants.
See App. Br. 44.
Regarding claims 8 and 9, Appellants contend the cited portions of
Cohen do not teach or suggest the claim limitations related to weighted
scores or dominant user activity, as recited in claims 8 and 9 respectively.
See App. Br. 45--49. For the same reasons stated for claim 1 and based on
the Examiner's findings and conclusion (see Ans. 12-16), which we adopt as
our own, we are unpersuaded of Examiner error.
For the above-stated reasons, we are not persuaded by Appellants'
arguments that the Examiner erred in finding the disclosures of Bhaskaran
and Cohen, in combination with the other applied references, teach or
suggest the disputed features of claims 5, 6, 8, and 9. Therefore, we sustain
the 35 U.S.C. § 103(a) rejection of claims 5, 6, 8, and 9.
CONCLUSION
The Examiner did not err in rejecting claims 1-27 under 35 U.S.C.
§ 101.
The Examiner did not err in rejecting claims 1-27 under 35 U.S.C.
§ 103.
DECISION
We affirm the Examiner's decision to reject claims 1-27.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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