Ex Parte D et al

Patent Trial and Appeal Board

Mar 13, 2018

12983061 (P.T.A.B. Mar. 13, 2018)

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.
12/983,061 12/31/2010 Adam DAngelo 102594-1064388-000400U S 9533
20350 7590 03/15/2018
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
FRISBY, KESHA
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM D’ANGELO,
CHARLES DUPLAIN CHEEVER, and
REBEKAH MARIE COX
Appeal 2017-006769
Application 12/983,061
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Adam D’Angelo et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision in the Final Action (dated July 16,
2015, hereinafter “Final Act.”) rejecting claims 1—26 under 35 U.S.C. § 101
as directed to ineligible subject matter. We have jurisdiction under
35 U.S.C. § 6(b).
1 Appellants’ Appeal Brief (filed Apr. 18, 2016, hereinafter “Appeal Br.”)
identifies Quora, Inc. as the real party in interest. Appeal Br. 2.
Appeal 2017-006769
Application 12/983,061
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants’ invention relates to methods and systems for “presenting
topic-specific biographical information about a user when presenting certain
content elements related to the user.” Spec. para. 1.
Claims 1,9, 15, 21, and 23—26 are independent. Claim 1, reproduced
below, is illustrative of the claimed invention:
1. A computer-implemented method comprising:
receiving a request to present a question page for a
question posted to a question-and-answer service;
determining at least one topic to which the question has
been assigned, or with which the question is associated;
identifying an answer to the question that has been posted
to the question-and-answer service by a first user;
selecting for presentation with the answer a portion of
biographical information for the first user, the portion of
biographical information selected from a variety of available
biographical information for the first user and for being relevant
with respect to a topic to which the question is assigned, or a
topic with which the question is associated; and
presenting the question page with the question, the answer
to the question, the name of the user who posted the answer to
the question, and the portion of biographical information selected
for being relevant with respect to a topic to which the question is
assigned, or a topic with which the question is associated;
wherein said selecting for presentation the biographical
information for the first user is performed by a processor-
implemented module of a server computer.
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ANALYSIS
Claims 1, 9, 15, 21, and 23—26
Appellants have not presented arguments for the patentability of
independent claims 9, 15, 21, and 23—26 apart from claim 1. See Appeal Br.
12—29. Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select
claim 1 as the representative claim to decide the appeal of the rejection of
these claims, with claims 9, 15, 21, and 23—26 standing or falling with claim
1.
Section 101 of the Patent Act defines patent-eligible subject matter:
“Whoever 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. In interpreting this statutory
provision, the Supreme Court has held that its broad language is subject to
an implicit exception for “laws of nature, natural phenomena, and abstract
ideas,” which are not patentable. Alice Corp. Pty. Ltd. v. CLS Banklnt’l,
134 S. Ct. 2347, 2355 (2014).
The Supreme Court has 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.” Alice,
134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 566 U.S. 66 (2012)). According to the Supreme Court’s framework,
we must first determine whether the claims at issue are directed to one of
those concepts (i.e., laws of nature, natural phenomena, and abstract ideas).
Id. If so, we must secondly “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
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additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (citation omitted). The Supreme Court characterizes the
second step of the 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.’” Id. (alteration in original) (citation omitted).
Step One
In making the rejection of claim 1, the Examiner finds that claim 1 is
“directed to the abstract idea[] of a method of organizing human activities
and/or an idea of itself.” Final Act. 2.
Appellants contend that “the Examiner merely concluded that the
claims at issue are directed to an abstract idea without identifying a similar
concept that the courts have identified as an abstract idea.” Appeal Br. 18.
Appellants submit that not all “methods of human activity . . . are
unpatentable under Alice.'” Appeal Br. 19.
The Examiner responds that receiving, determining, identifying,
selecting, and presenting information “is an abstract idea akin to similar
arrangements in precedent court cases that have been identified as abstract
ideas,” because “using categories to organize, store, and transmit
information was determined to be an abstract idea.” Ans. 5 (citing
Cyberfone Sys. LLC v. CNN Interactive Grp., 558 F. App’x 988 (Fed. Cir.
2014)).
Appellants reply that “the Examiner has not articulated what the
claims are directed to with enough specificity to ensure the step one inquiry
is meaningful.” Reply Br. 3 (citing Thales Visionix Inc. v. United States,
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850 F.3d 1343 (Fed. Cir. 2017)). According to Appellants, the Examiner’s
reliance on Cyberfone is improper because “the facts of this case do not
uniquely match the facts at issue in Cyberfone.” Reply Br. 3^4.
Appellants’ arguments are not persuasive. The Examiner has properly
and reasonably determined that claim 1 is directed to the abstract idea of
identifying relevant content (data) and presenting information (data) to a
user. See Final Act. 3; Ans. 4—5. More specifically, for example, claim 1
recites a question and an answer to the question, on a particular topic,
including biographical information of the person providing the answer,
thereby showing the relevance of the person to the topic, all being displayed
on the same page.2 The limitations recited involve nothing more than
receiving data and presenting the data in a particular format, i.e., including
bibliographical information. Such activities are squarely within the realm of
abstract ideas. See, e.g., Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350
(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);
Content Extraction & Transmission v. Wells Fargo Bank, 116 F.3d 1343
2 Independent claims 9, 15, 21, and 23—26 recite the same or similar
limitations and parallel claim 1 in method, non-transitory computer readable
media, and apparatus form. The Federal Circuit has made clear that “the
basic character of a process claim drawn to an abstract idea,” as per claim 1,
“is not changed by claiming only its performance by computers, or by
claiming the process embodied in program instructions on a computer
readable medium.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375-76 (Fed. Cir. 2011) (citing In re Abele, 684 F.2d 902 (CCPA
1982)).
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(Fed. Cir. 2014) (characterizing collecting data, recognizing certain data
within the collected data set, and storing the recognized data in memory as
drawn to an abstract idea).
Furthermore, although we appreciate that the claim language includes
more words than the phrase the Examiner used to articulate the abstract idea,
nonetheless, this is an insufficient reason for Appellants to persuasively
argue claim 1 is not directed to an abstract idea. Cf. Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016) (“An abstract idea can
generally be described at different levels of abstraction. As the Board has
done, the claimed abstract idea could be described as generating menus on a
computer, or generating a second menu from a first menu and sending the
second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.”).
Moreover, simply because the Examiner used a non-precedential case
for an analogy, also does not mean the rejection is in error. The Examiner
explains how each of the limitations of claim 1 either organizes, stores, or
transmits information as required by Cyberfone, whereas Appellants do not
provide persuasive evidence that identifying relevant data (organizing) and
presenting data (transmitting) do not compare to the facts in Cyberfone. The
Examiner has also provided a reasoned rationale that identifies the judicial
exception recited in claim 1, i.e., the abstract idea, and explained why it is an
exception. See Ans. 4—5; Final Act. 2—3. In contrast, Appellants have not
provided persuasive rebuttal evidence showing claim 1 is not directed to an
abstract idea, or that identifying relevant data and presenting the data, as per
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claim 1, irrespective of the level of abstraction that it is described, does not
constitute an abstract idea.
In conclusion, when read as a whole, independent claim 1 is directed
to identifying relevant data and presenting the data (i.e., organizing human
activity), and, for the reasons discussed above, constitutes an abstract idea.
The question to be settled next is whether claim 1 recites an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than an abstract idea.
Step Two
With respect to the second step of the Alice framework, the Examiner
determines that the additional element(s) “amount(s) to no more than: i)
mere instructions to implement the idea on a computer, and/or (ii) recitation
of generic computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional activities
previously known to the pertinent industry.” Final Act. 2. According to the
Examiner, “[vjiewed as a whole, these additional claim element(s) do not
provide meaningful limitation(s) to transform the abstract idea into a patent
eligible application of the abstract idea such that the claim(s) amounts to
significantly more than the abstract idea itself.” Id. at 2—3.
Appellants argue that under step two of Alice many factors need to be
considered, and, in this case, “when all of the relevant factors are
considered, they weigh in favor of the subject matter eligibility of the
claims.” Appeal Br. 25. Appellants list factors (a) through (f) and contend,
inter alia, that the claims require a “specially-configured computer,”
improve an existing technological process as in Diamond v. Diehr, 450 U.S.
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175, 191—92 (1981), do not perform “conventional operations,” and, as in
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
the claims are “necessarily rooted in computer technology.” Id. at 25—28.
The Examiner responds that the claims do not recite additional
elements that “amount to significantly more than the judicial exception
because ... the claims . . . requir[e] no more than a generic computer to
perform generic computer functions that are well understood, routine and
conventional activities previously known to the industry,” and the processor-
implemented module is “software . . . tied to the processor to perform the
functions.” Ans. 16.
Appellants’ arguments are not persuasive for the following reasons.
First, Appellants do not adequately show how the process steps of claim 1
are technically performed such that they are not functions of a generic
computer. There is no indication in the record that any specialized computer
hardware or other “inventive” computer components are required. For
example, Appellants’ Specification explicitly discloses:
The various operations of example methods described
herein may be performed, at least partially, by one or more
processors that are temporarily configured (e.g., by software) or
permanently configured to perform the relevant operations.
Whether temporarily or permanently configured, such processors
may constitute processor-implemented modules that operate to
perform one or more operations or functions.
Spec. para. 49; see also Fig. 12.
As such, the process of claim 1 employs a generic computer with
generic modules programmed to perform generic computer functions, i.e.,
receiving, determining, identifying, selecting, and presenting data, to
implement the abstract idea. See Alice, 134 S. Ct. at 2360. In other words,
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claim 1 is still directed to an abstract idea despite using “a specially-
configured computer.” Appeal Br. 25. The programming of a general
purpose computer does not focus on a specific improvement in how the
computer could carry out its basic functions of receiving, representing,
retrieving, interpreting, converting, weighing, and evaluating data. Elec.
Power Grp., 830 F.3d at 1354; see also EON Corp. IP Holdings LLC v. AT
& TMobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor
or general purpose computer lends sufficient structure only to basic
functions of a microprocessor. All other computer-implemented functions
require disclosure of an algorithm.”).
Secondly, we are also not persuaded by Appellants’ argument that
because the claims have overcome novelty and obviousness rejections, the
claims recite a specific combination of steps that compels the conclusion that
the subject matter is patent-eligible. See Appeal Br. 15. Although the
second step in the Alice/Mayo framework is termed as a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non­
obviousness, but rather, a search for “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,
134 S. Ct. at 2355 (citation omitted). A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90-91.
Finally, we are not persuaded by Appellants’ pre-emption argument.
See Appeal Br. 27—28. As the Examiner correctly notes, “the courts do not
use preemption as a stand-alone test for eligibility. Questions of preemption
are inherent in the two-part framework from” Alice and Mayo. Ans. 14.
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Although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354); see also OIP Techs., 788 F.3d at
1362—63 (“[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”). Thus, Appellants’ argument fails to apprise us of
Examiner error.
At best, claim 1 provides a practical application for presenting
biographical information of a person providing an answer to a question so
that the quality of the answer can be assessed by a user. However, a
recitation of a practical application for an abstract idea is insufficient to
transform an abstract idea into an inventive concept. Cf. CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court
[Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
of a practical application for the calculation could alone make the invention
patentable . . . .”).
DDR Holdings, Enfish, McRO, Diehr, and BASCOM
Appellants also contend that “the Examiner did not properly apply
precedents established by Court of Appeals for the Federal Circuit (CAFC)
in, at least, the following cases:” Amdocs Ltd. v. Openet Telecom, Inc., 841
F.3d 1288 (Fed. Cir. 2016), Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299 (Fed. Cir. 2016), BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and DDR Holdings,
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and that “following the same approach used by the Amdocs Court yields the
conclusion that the claims at issue have more in common with the claims at
issue in Enfish, McRO, BASCOM, and DDR Holdings than they do with any
of the references cited by the Examiner.” Reply Br. 11—16. Thus, according
to Appellants, “as in Amdocs, the claims in this case are directed to patent-
eligible subject matter.” Id. at 16.
Contrary to Appellants’ argument, claim 1 is not analogous to the
claims in DDR Holdings, Enfish, McRO, Diehr, and BASCOM. In DDR
Holdings, the Court determined “the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet.”
DDR Holdings, 773 F.3d at 1257. The Court also determined that the
invention was “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,”
and that the claimed invention did not simply use computers to serve a
conventional business purpose. Id. Rather, there was a change to the
routine, conventional functioning of Internet hyperlink protocol. Id.
Here, “selecting topic-specific biographical information” (see Reply
Br. 14) is not a challenge particular to computer networks, nor is it
necessarily rooted in computer technology. Rather, it is an implementation
on generic computer components of the abstract idea itself. We agree with
the Examiner that each of the limitations of claim 1 could be performed
“using pen and paper,” and that “the computer is simply used to automate or
make efficient what is routinely done before.” Ans. 8—12. Even accepting
Appellants’ assertion that the claim addresses a challenge particular to
computer networks, we are not persuaded that they do so by achieving a
result that overrides the generic use of the recited devices and functions.
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In contrast with the claims in Enfish, which were directed to an
improved computer database technique, see Enfish, 822 F.3d at 1338—1339,
the focus of claim 1 “is not on such an improvement in computers as tools,
but on certain independently abstract ideas that use computers as tools.”
Elec. Power, 830 F.3d at 1354. In Appellants’ claim 1, the claimed
processor-implemented module of a server computer does not effect an
improvement to computer functionality itself, but instead, focuses on the
process (i.e., selecting a portion of biographical information relevant to a
topic) that qualifies as an abstract idea, for which computer technology is
invoked merely as a tool.
Nor does claim 1 recite a specific technological improvement, such as
the improvement over existing manual 3-D animation techniques recited by
the claims in McRO. See McRO, 837 F.3d at 1313—16. Indeed, Appellants
have not presented persuasive evidence that the recited processor-
implemented module of a server computer provides a technological
improvement over an existing processor-implemented module of a server
computer.
For similar reasons, we reject Appellants’ assertion that the present
claims are similar to the claims in Diehr, which were found to be directed to
an improved process for molding rubber articles, rather than the process’
underlying mathematical formula (i.e., the Arrhenius equation). See Diehr,
450 U.S. at 181, 191-93.
We also disagree with Appellants’ characterization of the claimed
invention as a specific application and improvement to technologies in the
marketplace, similar to the claims in BASCOM. The claims in BASCOM
were directed to a technology-based solution of a specific way to filter
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content on the Internet that overcame existing problems with other Internet-
filtering systems and improved the performance of the computer system
itself. BASCOM, 827 F.3d at 1351. By contrast, the instant claims
determine which information to present and are simply the generic
automation of a traditional process, implementing a known manual human
activity on a computer for more efficient implementation of the abstract
idea. See BASCOM, 827 F.3d at 1351 (distinguishing the patent-eligible
claims at issue from those in OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701 (2015), because the
invention in OIP was simply the generic automation of traditional price-
optimization technique). Merely “[ujsing a computer to accelerate an
ineligible mental process does not make that process patent-eligible.”
Bancorp Services, LLC v. Sun LifeAssur. Co. of Canada, 687 F.3d 1266,
1279 (Fed. Cir. 2012); see also CLSBankInt'l v. Alice Corp. Pty. Ltd., Ill
F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) (“simply appending generic
computer functionality to lend speed or efficiency to the performance of an
otherwise abstract concept does not meaningfully limit claim scope for
purposes of patent eligibility”), affd, 134 S. Ct. 2347.
For the reasons discussed supra, following the same approach as used
in Amdocs, as Appellants suggest, we are not persuaded that the Examiner’s
discussion regarding the similarity of the claims to other claims found by
courts to be ineligible is in error.
As such, the recited elements, considered individually and as an
ordered combination, do not constitute an “inventive concept” that
transforms independent claim 1 into patent-eligible subject matter. See
Alice, 134 S. Ct. at 2355. Thus, independent claim 1 does not recite any
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limitation that, in practical terms, limits the scope of claim 1 so it does not
fully cover the abstract idea itself.
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 1 as directed to ineligible subject matter. Claims 9, 15,
21, and 23—26 fall with claim 1.
Claims 2—8, 10—14, 16—20, and 22
Appellants’ arguments that the Examiner failed to address each
dependent claim individually are also unavailing. Appeal Br. 22 and 29; see
also Reply Br. 4.
We agree with the Examiner that the dependent claims are directed to
non-statutory subject matter for the same rationale as used in regard to claim
1. See Final Act. 2—3. In this regard, the Examiner is correct in that the
additional recitations in dependent claims 2—8, 10-14, 16—20, and 22 further
define the abstract idea of claim 1 and use generic computer components to
collect information, analyze it, and display certain results of the collection
and analysis, and are thus directed to an abstract idea as well. See Ans. 11—
13. Specifically, dependent claims 2—4 further define how to collect
information for the topic to which the questions is assigned; claims 5—8, 10—
14, and 16—20 further define how to collect biographical information; and
claim 22 recites a generic user interface element. See Appeal Br. 31—37.
These claims do not include significantly more than the abstract concept
discussed above, nor do Appellants persuasively argue that these claims use
other than generic computer components.
Accordingly, for the foregoing reasons, we also sustain the rejection
of claims 2—8, 10-14, 16—20, and 22 under 35 U.S.C. § 101.
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SUMMARY
The Examiner’s decision to reject claims 1—26 under 35 U.S.C. § 101
as directed to ineligible subject matter 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)(l)(iv).
AFFIRMED
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