Ex Parte Cederman-Haysom et al

Patent Trial and Appeal Board

Sep 24, 2018

13966829 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/966,829 08/14/2013 Tim G. Cederman-Haysom
20575 7590 09/26/2018
Miller Nash Graham & Dunn
3400 U.S. Bancorp Tower
111 SW Fifth A venue
PORTLAND, OR 97204
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.
8255-0002 2568
EXAMINER
KASSIM, HAFIZ A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
patdocketing@millernash.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIM G. CEDERMAN-HAYSOM, DOUGLAS S. MORGAN,
MICHAEL R. SELA, and PHILLIP J. LUDWIG
Appeal2017-005656
Application 13/966, 829 1
Technology Center 3600
Before, JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BART A. GERSTENBLITH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-19. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify SurveyMonkey Inc. as the real party in interest.
(Appeal Br. 3).
Appeal2017-005656
Application 13/966,829
THE INVENTION
Appellants claim a system and a method "for administering and
managing online surveys and, more particularly, [for] creating, facilitating,
and evaluating such surveys." Spec. 1:5-7.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A system, comprising:
a question repository configured to store multiple sets of
questions, each set of questions including questions that have a
superficial modifier portion, a semantic modifier portion, an
open-ended modifier portion, or a combination thereof;
a survey management module configured to allow a
user to select a set of questions from the question repository
for an online survey, wherein the survey management
module is further configured to provide superficial modifier,
semantic modifier, and open-ended modifier options for each
question having such modifier portions; and
a benchmarking module configured to collect
information about the survey-creator, group the questions by
semantic modifier options, and provide an analysis based on
the collected information and information about other
survey-creators that created other surveys with a question
having the same semantic modifier options.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Parker et al.
hereinafter "Parker"
Pullin
Ryan
Farlie
US 2002/0052774 Al
US 2010/0274632 Al
US 2010/0306024 Al
us 2014/0337097
2
May 2, 2002
Oct. 28, 2010
Dec. 2, 2010
Nov. 13, 2014
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Application 13/966,829
The following rejections are before us for review. 2
Claims 1-19 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 1--4, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parker in view of Ryan.
Claims 5-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parker in view of Ryan and further in view of Farlie.
Claims 12-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parker in view of Ryan and further in view of Pullin.
Claims 15-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parker in view of Ryan in view of Pullin and further in
view of Farlie.
FINDINGS OF FACT
We adopt the Examiner's findings as set forth on pages 2-9, 15, and
16 of the Final Action pertaining to the rejection made under 35 U.S.C.
§ 101.
ANALYSIS
35 U.S.C. § 101 REJECTION
We affirm the rejection of claims 1-19 under 35 U.S.C. § 101.
2 The Examiner withdrew the rejections under 35 U.S.C. §§ 112(a) and
§ 112(b ). (Answer 3).
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Application 13/966,829
Appellants argue claims 1-19 as a group. We select independent
claim 1 as representative. The remaining claims stand or fall with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
In judging whether independent claim 1 falls within the excluded
category of abstract ideas, we are guided in our analysis by the Supreme
Court's two-step framework, described in Mayo and Alice. Alice Corp. v.
CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). In
accordance with that framework, we first determine whether the claims are
"directed to" a patent-ineligible abstract idea. If so, we then consider the
elements of the 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 of the abstract idea. Id. This is a
search for an "inventive concept," an element or combination of elements
sufficient to ensure that the claim amounts to "significantly more" than the
abstract idea itself. Id. The Court also stated that "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Id. at 2358.
The Specification states the claimed invention, "pertains generally to
systems and methods for administering and managing online surveys and,
more particularly, to creating, facilitating, and evaluating such surveys."
Spec. 1: 5-7. We, thus, determine that the claims are directed to determining
the effectiveness of a survey, which is a business/cost issue and a method of
organizing human behavior. A method of organizing human
activities/behavior and fundamental economic practices long prevalent in
our system of commerce, are abstract ideas beyond the scope of§ 101. See
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Alice, 134 S. Ct. at 2355-56. The Specification also states that the invention
is directed to evaluating the results of surveys. Spec. 1 :26-27. Collecting
information, analyzing it, and displaying results from certain results of the
collection and analysis are abstract ideas. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the
limitations are considered separately. The sequence of data reception-
analysis-access/display is equally generic and conventional or otherwise
held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (holding that sequence of data retrieval, analysis,
modification, generation, display, and transmission was abstract); Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (holding sequence of processing, routing, controlling, and
monitoring was abstract). The ordering of the steps is, therefore, ordinary
and conventional.
We next consider whether additional elements of claim 1, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. The Specification, at pages 2-3, discloses using generic computer
components in a conventional manner for their known functions.
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Taking the claim elements individually, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query, computation, and
retrieval-several of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to creating, facilitating, and evaluating surveys. See Elec.
Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call
Processing Patent Litig, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a
possible narrower construction of the terms 'processing,' 'receiving,' and
'storing,' ... those functions can be achieved by any general purpose
computer without special programming."). In short, each step does no more
than require a generic computer to perform generic computer functions. As
to the data operated upon, "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 and analysis other than abstract."
SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018)
(internal citation omitted).
"[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. Stating an
abstract idea 'while adding the words 'apply it' is not enough for patent
eligibility." Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1294).
Appellants argue, "the Examiner did not present prima facie evidence
that the claims comprise an abstract idea." (Appeal Br. 8).
We disagree with Appellants. The Examiner found the "invention is
directed to 'customer feedback' regarding services outsourced." (Final Act.
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3). The Examiner further found the claimed "'electronic device collecting
information, grouping questions, providing an analysis, providing a visual
representation, a storage device storing' does not qualify as 'significantly
more' because the limitation does not amount to an improvement to another
technology or technical field." (Final Act. 7).
The Examiner also analyzed the claims using the Mayo/Alice two-step
framework, consistent with the guidance set forth in the US PTO' s
2015 UPDATE OF THE INTERIM GUIDANCE ON PATENT SUBJECT MATTER
ELIGIBILITY. (Final Act. 2-9). In this regard, there is no requirement that
examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
Section IV, "JULY 2015 UPDATE: SUBJECT MATTER ELIGIBILITY" to
2014 INTERIM GUIDANCE ON PATENT SUBJECT MATTER ELIGIBILITY (2014
IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the ultimate legal
conclusion on eligibility without making any factual findings." ( emphasis
added) (footnote omitted)). We agree that evidence may be helpful in
certain situations where, for instance, facts are in dispute. 3 But, it is not
3 See, e.g., MPEP § 2106.07(a)(III) (2018) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Thus, the court does not require 'evidence' that a claimed
concept is a judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues." (citations omitted)).
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always necessary. Based on the above analysis set forth by the Examiner,
we are unpersuaded it is necessary in this case.
All that is required of the Office to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must "notify the applicant,"
"stating the reasons for such rejection," "together with such information and
references as may be useful in judging of the propriety of continuing
prosecution of his application." 35 U.S.C. § 132; see In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). Here, as we found above, the Examiner has
made these findings as required by the statute. See Final Act 2-9.
Accordingly, we find no error with the Examiner's prima facie case
that the claimed implementation does not rise to more than the performance
of well-understood, routine, conventional activities previously known to the
industry.
Appellants further argue, "claims 1-19 are patentable under 35 U.S.C.
§ 101 based on DDR Holdings because claims 1-19 of the instant
application are similar to the claims in DDR Holdings in that the claims of
the instant application recite a specific way to provide an analysis based on
collected information .... " (Appeal Br. 8).
We disagree with Appellants. Nothing in claims 1-19 purports to
improve computer functioning or "effect an improvement in any other
technology or technical field." Alice, 134 S. Ct. at 2359. Nor do the claims
solve a problem unique to the Internet. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Determining the
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effectiveness of a survey is a business/cost problem; it is not one specifically
arising from computer network technology. The claims recite the use of a
network and modules operating in their normal capacities. Id. at 1258-59
(citing Ultramercial, 772 F.3d at 1264). In contrast to the claims on appeal,
the claims in DDR Holdings "specify how interactions with the Internet are
manipulated to yield a desired result - a result that overrides the routine
and conventional sequence of events ordinarily triggered by the click of a
hyperlink." DDR Holdings, 773 F.3d at 1258.
Appellants' citation to McRO as supporting patent eligibility is
equally misplaced because the question is whether the claims as a whole
"focus on a specific means or method that improves the relevant technology"
or are "directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery." McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, claim 1
as a whole is focused on satisfying certain contingencies of the aspiration or
effect of "collecting information about a survey creator." Moreover, the
limitations do not recite implementation details. Instead, they recite
functional results to be achieved. In other words, claim 1 does not recite "a
particular way of programming or designing the software ... , but instead
merely recites the effect of "collecting information about a survey creator."
The claims do not, for example, purport to improve the functioning of
the computer itself. Nor do they effect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of information access under different scenarios. See, e.g.,
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Spec. 2 :22-3: 19. The Specification does not describe any particular
improvement in the manner a computer functions, at least with respect to the
claims in the instant application. Instead, the claims at issue amount to
nothing significantly more than instructions to apply the abstract idea of
information access and retrieval using some unspecified, generic computer.
Under Supreme Court precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
Appellants further argue,
Appellant [sic] submits that the claims of the instant application
result in an improvement in a different technological field by
way of generating an analysis of an online survey based on
collected information and information about survey-creators
that created other surveys with a question having the same
semantic modifier options as the online survey.
(Appeal Br. 9-10).
We disagree with Appellants. As found supra, we find nothing in the
claims that is directed to an improvement in computer capabilities. The
capability of the computer as claimed before us here remains that of a
generic computer. Even if the claimed process allegedly results in assessing
the effectiveness of a survey, that is not the function of a technical
improvement in the computer, e.g., higher speed processor due to circuit
construction. Rather, it is merely the normal work by computers invoked as
the tool for the process.
35 U.S.C. § 103 REJECTION
Independent claim 1 recites in pertinent part,
a benchmarking module configured to collect
information about the survey-creator, group the questions by
semantic modifier options, and provide an analysis based on the
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collected information and information about other survey-
creators that created other surveys with a question having the
same semantic modifier options.
The Specification states:
As used herein, superficial modifiers generally pertain to
any type of superficial change that does not alter the substance,
or semantic meaning, of the question. An example of a
superficial modifier is changing "he" to "she" in a question
whose answer is wholly unrelated to gender. Semantic
modifiers, as used herein, generally pertain to data fields or
descriptions that are more than superficial, such as how
somebody might feel about a certain type of object or thing,
e.g., whether he or she likes or dislikes a certain product or
service or otherwise loves or hates the product/service. Open-
ended modifiers, as used herein, generally pertain to data fields
or descriptions that can be provided directly by the creator of
the question or survey. An example of an open-ended modifier
is a dropdown box having a listing of job titles and a blank
space in which the survey-creator can type a title that is not in
the list, or type a person's name.
(Spec. 3:26-4:5).
The Examiner found, concerning this limitation, that,
Parker teaches a benchmarking module ("server (12)
executes a computer program to generate surveys, validate
and analyze survey responses, recommend and generate
follow-up surveys, and display survey results.") [Pg 1 para
18; Parker] configured to collect information about the survey-
creator (survey proprietors i.e. Fig 3 - 16 ACME Widget) ....
Ryan teaches each set of questions including questions
that have a superficial modifier portion ( questions relating to a
survey respondent's gender, age, and ethnicity may be
associated with a "demographic" theme), a semantic modifier
portion (Questions relating to a survey respondent's
television viewing habits may be associated with a "television"
theme) an open-ended modifier portion (As shown in Fig. 68
( 616)) or a combination thereof ....
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(Final Act. 18-19).
Appellants argue,
The Action at page 10 directs attention to
paragraph [0069] of Parker - and the Final Action at
pages 12-13 direct attention to Figs. 3 and 17 of Parker - but
Appellant notes that neither the cited portions nor any other
portions of Parker appear to describe collecting information
about the survey-creator, i.e., the user or entity that actually
created the online survey, let alone providing an analysis based
on the collected information and information about other survey
creators ( e.g., other users) that created other surveys [including
questions that have a superficial modifier portion, a semantic
modifier portion, an open-ended portion, or a combination
thereof]; rather, for example, Fig. 3 of Parker merely describes
the collecting of information about a "survey proprietor," i.e.,
the subject of the survey.
(Appeal Br. 11 ).
Parker at paragraph 53 states, in part:
In the example of FIG.11, the subject of the survey is the
fictitious ACME widget to indicate that the subject may be
anything. The report card includes information
obtained/derived from all surveys run by the current proprietor,
not just from the latest survey.
Thus, we find that the results of the survey in Parker are directed to
the subject of the survey-"ACME widget," and not about collecting
information about the claimed survey creator. That the Examiner equates
survey proprietors with the survey creator is not convincing because it is not
apparent and the Examiner has not explained why the proprietor/subject of
the survey should be considered its creator. This difference is important
because according to the Specification, "there remains a need for further
improvements in facilitating the administering and management of- and
collecting information and data in association with - online surveys."
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Spec. 1:21-23. Therefore, we will not sustain the rejection of independent
claim 1.
The Examiner did not rely upon any other reference as meeting this
limitation of the claim. Therefore, because claims 2-11 depend from
claim 1, and because we do not sustain the rejection of claim 1, the rejection
of claims 2-11 likewise is not sustained.
Independent claim 12 similarly requires "collecting information about
other users that have created other surveys," which we construe as the
survey-creator. For the reasons given above concerning the failure of
Parker and Ryan to disclose the above-noted limitation, we will not sustain
the rejection of independent claim 12."
The Examiner did not rely upon any other reference as meeting this
limitation of the claim. Therefore, because claims 13-19 depend from
claim 12, and because we do not sustain the rejection of claim 12, the
rejection of claims 13-19 likewise is not sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-19 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
We conclude the Examiner did err in rejecting claims 1--4, 10, and 11
under 35 U.S.C. § 103(a) as being unpatentable over Parker in view of Ryan.
We conclude the Examiner did err in rejecting claims 5-9 under
35 U.S.C. § 103(a) as being unpatentable over Parker in view of Ryan and
further in view of Farlie.
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We conclude the Examiner did err in rejecting claims 12-14 under
35 U.S.C. § 103(a) as being unpatentable over Parker in view of Ryan and
further in view of Pullin.
We conclude the Examiner did err in rejecting claims 15-19 under
35 U.S.C. § 103(a) as being unpatentable over Parker in view of Ryan in
view of Pullin and further in view of Farlie.
DECISION
The decision of the Examiner to reject claims 1-19 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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