Ex Parte Bhagwan et al

Patent Trial and Appeal Board

Jul 19, 2017

12195126 (P.T.A.B. Jul. 19, 2017)

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.
12/195,126 08/20/2008 Varun Bhagwan ARC920080029US3 7905
67232 7590 07/21/2017
TANTOR TOT RTTRN T T P - TRM ART DTVTSTON
EXAMINER
20 Church Street PRATT, EHRIN LARMONT
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/21/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VARUN BHAGWAN,
TYRONE WILBERFORCE ANDRE GRANDISON,
DANIEL FERDERICK, and JAN HENDIK PIEPER
Appeal 2016-003790
Application 12/195,126
Technology Center 3600
Before ALLEN R. MACDONALD, CAROLYN D. THOMAS, and
NABEEL U. KHAN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 2, 4—6, 8, 9, 11—14, 16—18, and 20,
all the pending claims in the present application. Claims 3, 7, 10, 15, and 19
are canceled. See Claim Appendix. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to determining preferences
from information mashups. See Abstract.
Appeal 2016-003790
Application 12/195,126
Claim 1 is illustrative:
1. A computer-implemented method for determining
preferences from cross-modality information mashups, the method
comprising:
receiving by a computer a function for scoring two or
more voting computing methods;
identifying by the computer the two or more vote
computing methods, wherein each of the two or more vote
computing methods are different combination techniques;
for each of the two or more vote computing methods,
using by the computer the vote computing method to combine
information on preferences into a combined list ranking the
preferences, wherein the information comprises:
a first data from a first source, the first data
includes a first list of preferences; and
a second data from a second source, the second
data includes an unstructured data used by the computer
to create a second list of preferences;
wherein the first data source and the second data
source each have different modalities, the modalities
include intentional, passive[,] and creative;
for each combined list, inputting by the computer the
combined list into the function to compute a score
corresponding to each of the voting computing methods; and
outputting from the computer the combined list of the
vote computing method associated with the highest score.
Appellants appeal the following rejections:
Rl. Claims 1, 2, 4—6, 8, 9, 11—14, 16—18, and 20 are rejected under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter (Final Act. 2—3);
R2. Claims 1, 2, 5, 6, 8, 9, 11—14, 16—18, and 20 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Urken (US 2002/0103695 Al,
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Aug. 1, 2002) and Kirshenbaum (US 6,763,338 B2, July 13, 2004) (id. at 4—
22); and
R3. Claim 4 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Urken, Kirshenbaum, and Clark (US 2006/0184483 Al,
Aug. 17, 2006) (id. at 22—23).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Rejection under §101
Issue 1: Did the Examiner err in finding that the claims are directed
to non-statutory subject matter?
With respect to independent method claim 1, and similarly, computer-
readable medium claim 8 and system claim 16, the Examiner finds these
claims are directed to an abstract idea of “ranking preferences” which is “a
fundamental business practice” (Final Act. 2). The Examiner adds that the
claims are “similar to concepts relating to processes of organizing
information found in ‘Digitech’ . . . organizing information through
mathematical correlations” (Ans. 3), and “to mathematical algorithms,
mathematical relationships, mathematical formulas, and calculations found
in ‘In re Maucorps’” (id.). The Examiner further finds that “[t]he claims do
not recite limitations that are ‘significantly more’ than the abstract idea
because the claims do not recite an improvement to another technology or
technical field” (Final Act. 2) and “includes using generic computer(s)
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performing generic computer functions . . . [and] appending well-known,
routine, and conventional activities” (Ans. 4).
Appellants contend “the Supreme Court seems to think that an idea is
only a patent ineligible abstract idea if it is really, really old and well-
established” (App. Br. 6) and “the claims are directed to significantly more
than the abstract idea itself because the claims include specific limitations
other than what is well-understood, routine and conventional” (id. at 6; see
also Reply Br. 4). Appellants further contend that “Claim[s] 1, 8, and 16
ties the method to a specific structure or machine, i.e. [,] a computer” (Reply
Br. 4), the “Examiner has failed to review the totality of the evidence (i.e. [,]
the specification and claims) and articulate any evidence,” and the
“modalities are tied to a particular technological environment (i.e. [,] the
online arena)” (id. at 6).
We disagree with Appellants’ contentions. Instead, we find that the
Examiner has provided a sufficient response supported by a preponderance
of evidence (Ans. 5—8). As such, we refer to, rely on, and adopt the
Examiner’s findings and conclusions set forth in the Answer. Our
discussions here will be limited to the following points of emphasis.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v.
CLSBankInt'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
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the basic tools of scientific and technological work.”). Notwithstanding, that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94
(2012). In Mayo, the Court stated that “to transform an unpatentable law of
nature into a patent eligible application of such a law, one must do more
than simply state the law of nature while adding the words ‘apply it.”’ Id. at
1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “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, 132 S.
Ct. at 1298, 1297).
In other words, the second step is to “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.’” Id. (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea
“cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment or adding insignificant post-solution
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activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that “‘[s]imply
appending conventional steps, specified at a high level of generality,’ was
not ‘enough’ [inMayo] to supply an ‘inventive concept.”’ Alice, 134 S. Ct.
at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 recites five steps: (a) receiving; (b) identifying; (c)
combining; (d) inputting; and (e) outputting. Each of these steps involve
information. A function is received and voting computing methods are
identified. The vote computing methods are used to combine information on
preferences into a combined list. The combined list is inputted into the
function to compute a score. The combined list associated with the highest
score is outputted. This is the essence of ranking preferences and organizing
the information on preferences.
On the record before us, Appellants dispute that the claims are
directed to an abstract idea, in essence because they believe the concept is
not “really, really old and well-established” (App. Br. 6). We are not
persuaded of error. For instance, information collection and analysis,
including when limited to particular content, is within the realm of abstract
ideas. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent-ineligible concept”); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
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Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011). Further, claim 1 employs little more than the
manipulation of information through a long prevalent social welfare function
(SWF) construct that combines data from various sources (see Spec. H 19
and 43 49). Such processes have been found to be abstract ideas. See
Digitech, 758 F.3d at 1351 (quoting Parker v. Flook, 437 U.S. 584, 595
(1978)); see also In re Maucorps, 609 F.2d 481, 485-86 (CCPA 1979)
(holding a method of “optimizing the organization of sales representatives”
unpatentable), cited in CyberSource, 654 F.3d at 1371 n.2.
Because the claims are directed to mathematical manipulations, an
abstract idea, the claims at issue are directed to patent-ineligible subject
matter.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
To establish a prima facie case, the Examiner must next identify all of
the additional elements in each claim and explain why these elements,
individually or collectively, do not add significantly more than the abstract
idea. Here, the Examiner finds that the claims “includes using generic
computer(s) performing generic computer functions . . . [and] appending
well-known, routine, and conventional activities” (Ans. 4). We agree with
the Examiner.
“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].”’ Alice, 134 S. Ct. at 2357 (brackets in
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original) (quoting Mayo, 132 S. Ct. at 1297). The prohibition against
patenting an abstract idea “cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. at 610-11
(citation and internal quotation marks omitted). The recitations in claim 1
pertaining to “a computer” are analogous to the recitation of a conventional
“computer” discussed in Alice.
Additionally, as recognized by the Federal Circuit in Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can also provide a “‘useful clue’” in the second
step of the Alice framework. See Bilski, 561 U.S. at 611. Under Bilski’s
MoT test, a claimed process can be considered patent-eligible under § 101 if:
(1) “it is tied to a particular machine or apparatus”; or (2) “it transforms a
particular article into a different state or thing.” Bilski, 545 F.3d 943, 954
(Fed. Cir. 2008) (citing Gottschalk, 409 U.S. at 70, 93 S. Ct. 253).
Here, Appellants merely contend that “Claim[s] 1, 8, and 16 ties the
method to a specific structure or machine, i.e., a computer” (Reply Br. 4),
the “Examiner has failed to review the totality of the evidence (i.e.[,] the
specification and claims) and articulate any evidence,” {id. at 5) and the
“modalities are tied to a particular technological environment (i.e. [,] the
online arena)” (id. at 6). In other words, Appellants merely contend that
method claim 1 and its corresponding medium and system claims 8 and 16
are tied to a computer, but do not argue that the claims are involved in any
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type of transformation of any particular article.1 Claim 1 merely recites that
each step is “computer-implemented” and/or performed “by a computer”
(see claiml). We agree with the Examiner that claim 1 simply incorporates
a generic component, i.e., a computing device, into the method to perform
the abstract concept of ranking preferences.
As recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” See Alice, 134 S. Ct. at 2359 (concluding claims
“simply instructing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, 772 F.3d at 715—16 (claims merely reciting abstract idea
of using advertising as currency as applied to particular technological
environment of the Internet not patent eligible); Accenture Global Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir.
2013) (claims reciting “generalized software components arranged to
implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer” not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333—34 (Fed. Cir. 2012) (“[s]imply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible” (internal citation omitted)).
Fimiting such an abstract concept of “ranking preferences” to generic
components, such as a computing device, does not make the abstract concept
patent-eligible under 35 U.S.C. § 101. Because Appellants’ independent
1 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent’s media claims. Id.
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claims 1, 8, and 16 are directed to a patent-ineligible abstract concept and do
not recite something “significantly more” under the second prong of the
Alice analysis, we sustain the Examiner’s rejection of these claims as well as
respective dependent claims 2, 4—6, 9, 11—14, 17, 18, and 20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter in light of
Alice and its progeny.
For the foregoing reasons, Appellants’ contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
Rejections under § 103(a)
Issue 2: Did the Examiner err in finding that Urken teaches or
suggests voting computing methods, as set forth in claim 1?
Appellants contend that “Urken does not teach creating multiple
combined lists each based on vote computing methods and then inputting
those lists into a function to score each of the combined lists and outputting
the combined list with the highest score” (App. Br. 8). Appellants further
contend that in “the Final Office Action mailed 8/23/2013, [the] Examiner
acknowledges that Kirshenbaum fails to disclose, ‘for each combined list,
inputting . . . and outputting . . .’” (id. at 9).
As an initial matter, we note that the Final Office Action mailed
8/23/2013, referenced by Appellants, is superseded by the Final Office
Action mailed 2/05/2015 in which the Examiner does not acknowledge that
Kirshenbaum fails to disclose “for each combined list, inputting . . . and
outputting ...” Therefore, Appellants contention pertaining thereto is moot.
As for Appellants contention that Urken does not teach creating
multiple combined lists and inputting and outputting the same as claimed
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(see App. Br. 8), we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
the aforementioned disputed limitation. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 201 l)(“we hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”). We decline to examine the
claims sua sponte, looking for distinctions over the prior art. Cf. In re
Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”). See
also Ex parte Belinne, No. 2009-004693, 2009 WF 2477843 at *3-4 (BPAI
Aug. 10, 2009) (informative).
Here, Appellants merely point out what claim 1 recites, followed by
what Urken discloses in paragraphs 78—80 and 124—126 (see App. Br. 7—9)
without providing any meaningful analysis that explains why the Examiner
erred, i.e., the Examiner cites at least paragraphs [76—81] and [124—129] for
teaching/suggesting the aforementioned limitations (see Final Act. 4—6) and
Appellants merely reiterates the same to us. Also, Appellants fail to explain
why the Examiner has not shown the Urken teaches “vote computing
methods.” A statement which merely points out what a claim recites will
not be considered an argument for separate patentabi lity of the claim. See
37 C.F.R. § 41.37(c)(l)(vii), We note that arguments which Appellants
could have made but chose not to make in the Briefs have not been
considered and are deemed to be waived. Therefore, Appellants’ arguments
are unpersuasive.
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Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellants’ arguments regarding the Examiner’s rejection of independent
claims 8 and 16 rely on the same arguments as for claim 1, and Appellants
do not argue separate patentability for the dependent claims. See App. Br.
7—10. We, therefore, also sustain the Examiner’s rejection of claims 2, 4—6,
8, 9, 11-14, 16-18, and 20.
DECISION
We affirm the Examiner’s § 101 and § 103(a) rejections Rl—R3.
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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