Ex Parte Davis

Patent Trials and Appeals Board

Mar 29, 2019

13151407 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/151,407 06/02/2011
37476 7590 03/29/2019
WHITE-WELKER & WELKER, LLC
P.O. BOX 199
CLEAR SPRING, MD 21722-0199
FIRST NAMED INVENTOR
Hellen Davis
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.
Indaba-RPAl 4865
EXAMINER
BULLINGTON, ROBERT P
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
03/29/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELLEN DA VIS 1
Appeal2017-006336
Application 13/151,407
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CAL VE, and
BRANDON J. WARNER, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1-14. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellant is identified as the real party in interest. Br. 3.
Appeal2017-006336
Application 13/151,407
CLAIMED SUBJECT MATTER
Claims 1, 9, and 14 are independent. Claim 1 is reproduced below.
1. A method to link a self-assessment and 3rd party
evaluations to performance or personal development through
eLeaming and online training recommendations as well as
coaching proposals and advice, capable of execution on a
computer, comprising the steps of:
assigning a password for a respondent;
initializing a set of permissions relative to the password;
providing an evaluation instrument which gauges an
individual's current core competency level based on self-
assessment and the input from the assessment of 3rd party
respondents in the areas of work, social and family
relationships, and considers future desired competency levels;
determining or measuring the gaps in perception between
self and 3rd party assessment regarding same;
providing recommendations, after determinations are
made, for the appropriate method or a combination of methods
selected from a group consisting of:
further data gathering,
eLeaming suggestions,
online training references, and
coaching suitability with regards to a particular job, an
individual's performance or behavior with regards to their
competency for a particular job, or an individual boss's
performance with regards to a particular job to a respondent
after verification of the password;
evaluating a team[']s performance and individual team
member's performance as the performances relates to the
process or system;
receiving responses from the respondent to the evaluation
instrument;
processing the responses into an evaluation report;
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generating the evaluation report containing one or more
suggestions with respect to behavior with complementary
training and/ or eLeaming recommendations for each of the
suggestions; and
sending the evaluation report to one or more locations
authorized by the set of permissions associated with the
password; and
providing the appropriate online training, eLeaming, or
coaching recommendations.
REJECTI0NS 2
Claims 1-14 are rejected as being directed to patent-ineligible subject
matter under a judicial exception to 35 U.S.C. § 101.
Claims 1 and 2 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Roecker (US 2009/0276294 Al, pub. Nov. 5, 2009) and Schmidt (US
2009/0011395 Al, pub. Jan. 8, 2009).
Claims 3-9, 13, and 14 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Roecker, Schmidt, and Fox (US 2011/0047224 Al, pub.
Feb. 24, 2011).
Claims 10-12 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Roecker, Schmidt, Fox, and Levin (US 2003/0101091 Al, pub. May
29, 2003).
2 We consider the Examiner to have withdrawn the rejection of claims 1-8
under 35 U.S.C. § 112, first paragraph, for lack of a written description of
the limitation "determining an individual's current core competency level"
following Appellant's Amendment to delete that limitation from claim 1.
See Amendment, filed Jan. 31, 2016; see also Adv. Action, mailed Feb. 17,
2016, continuation sheet (stating that the rejections under 35 U.S.C. §§ 101
and I03(a) are maintained); Ans. 2-29 (listing the grounds of rejection as
only those under 35 U.S.C. §§ 101 and I03(a)).
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ANALYSIS
Claims 1-14 Under 35 U.S.C. § 101
Appellant argues claims 1-14 as a group. Appeal Br. 14--18. We
select claim 1 as representative, with claims 2-14 standing or falling with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The patent laws provide that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. However,
"this 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'!, 573 U.S. 208,216 (2014) (citation omitted).
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the
Supreme Court "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, 573 U.S. at 217
(citing Mayo, 566 U.S. at 77). First, we determine whether the claims are
directed to such a patent-ineligible concept. Id. If so, we consider the claim
elements individually and as an ordered combination to determine whether
additional elements transform the claims into a patent-eligible application.
Id. This search for an inventive concept in the second step seeks an element,
or a combination of elements "sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept]
itself." Id. at 217-218.
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On January 7, 2019, the United States Patent and Trademark Office
published the 2019 Revised Patent Subject Matter Eligibility Guidance in
the Federal Register, in which the Office revised its examination procedure.
84 Fed. Reg. 50 ("Revised Guidance"). To determine if a claim recites an
abstract idea under Prong One of the Revised Guidance, Examiners must
identify specific limitations in the claim (individually or in combination) that
the Examiner believes recite an abstract idea, and determine whether the
identified limitation(s) falls within the subject matter groupings set forth in
Section I of the Revised Guidance. Id. at 54 (III. A. Revised Step 2A).
The subject matter groupings include mathematical concepts, certain
methods of organizing human activity, and mental processes. Id. at 52. If
the claim recites a judicial exception, the Examiner must evaluate whether
the judicial exception is integrated into a practical application under Prong
Two. Id. at 54. If the exception is so integrated, the claim is not directed to
a judicial exception and is patent eligible and no further analysis is needed.
Id. However, if the additional elements do not integrate the exception into a
practical application, then the claim is directed to the judicial exception and
further analysis is required under Step 2B to determine if the claim recites an
inventive concept. Id.
Step One, Prong One: Do the Claims Recite An Abstract Idea?
The Examiner determines that claim 1 recites an abstract idea. The
Examiner determines that claim 1 recites a method of organizing human
activity through employee evaluations and subsequent development/training.
Final Act. 3; Ans. 2-3. The Examiner also determines that claim 1 recites a
mental process that can be performed in the human mind or by pen and
paper. Ans. 2-5. As discussed below, we agree with both determinations.
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Organizing Human Activity Via Employee Evaluation and Development
The Examiner determines claim 1 is directed to "an abstract idea of
linking self-assessment and 3rd party evaluations to performance or personal
development" by reciting "providing an evaluation instrument which gauges
an individual's current core competency level based on a self-assessment
and the input from the assessments of 3rd party respondents in the areas of
work and social and family relationships ... ," "determining or measuring
the gaps in perception between self and 3rd party assessment regarding the
same," "providing recommendations, after determinations are made, for the
appropriate method ... of further data gathering, eLeaming suggestions,
online training references, and coaching suitability with regards to a
particular job ... ," "evaluating a team's performance and individual team
member's performance ... ," "receiving responses from the respondent to the
evaluation instrument," "processing the responses into an evaluation report,"
and "generating the evaluation report containing one or more suggestions
with respect to behavior with complementary training and/or eLeaming
recommendations for each of the suggestions," and "providing the
appropriate online training, eLeaming, or coaching recommendations."
Final Act. 3--4; Ans. 2-3. The Examiner determines these "limitations are
akin to a longstanding human organizing activity which was at issue in Alice
Corp and has been identified ... to be an abstract idea." Final Act. 4.
The Revised Guidance provides that "[c]ertain methods of organizing
human activity" including "managing personal behavior or relationships or
interactions between people (including social activities, teaching, and
following rules or instructions" are abstract ideas. 84 Fed. Reg. 50, 52. We
find that claim 1 recites such an abstract idea of organizing human activity.
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Claim 1 recites steps of organizing human activity by "providing an
evaluation instrument which gauges an individual's current core competency
level based on self-assessment and the input from the assessment of 3rd
party respondents in the areas of work, social and family relationships, and
considers future desired competency levels." Thus, the claim is directed to
organizing employee evaluations through self-assessment and evaluations of
others in work, social, and family spheres of activity. Final Act. 3; Ans. 2.
Claim 1 recites steps that determine or measure gaps between a one's
self-assessment and 3rd party assessments "regarding same." The analysis
or information is used for "providing recommendations, after determinations
are made, for the appropriate method or a combination of methods selected
from a group consisting of: further data gathering, eLearning suggestions,
online training references, and coaching suitability." Thus, human activity
in the areas of education, training, and learning is organized based on the
self-assessments and evaluations. The recommended training can involve an
organized human activity of coaching the individual. Final Act. 3; Ans. 2.
Claim 1 recites "evaluating a team[']s performance and individual
team member's performance" by receiving and processing responses to the
evaluations. Reports are generated with suggestions for the "behavior with
complementary training and/or eLearning recommendations for each of the
suggestions" and an evaluation report is sent to authorized locations for
online training, eLearning, and coaching. These limitations are directed to
evaluating the activity of teams of individuals and organizing training,
learning, and coaching activities, which is one certain method of organizing
human activity under the Revised Guidance, and is thus an abstract idea.
See Final Act. 3--4; Ans. 2-3.
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Mental Processes
The Examiner also finds that claim 1 recites a method that "can be
practiced as a mental process performed in the human mind or by pen and
paper." Ans. 3. In particular, the Examiner finds that the steps of providing
an evaluation instrument to measure an individual's core competency level
based on self-assessments and assessments from 3rd party respondents for
work, social, and family relationships and determining and measuring gaps
in perception of self and 3rd party assessments are interpreted as comparing
information, which involves a mental process. Id. at 3--4. The Examiner
also finds that recommendations for data gathering, eLeaming suggestions,
online training references, and coaching suitability for a job based on an
individual's performance and behavior are mental processes that compare
new and stored information using rules to identify options. Id. at 4--5.
The Revised Guidance provides that "[ m ]ental processes----concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion)" are abstract ideas. Revised Guidance, 84 Fed. Reg. 50,
52. We find that claim 1 's employee evaluation process recites a mental
process and therefore is an abstract idea under the Revised Guidance.
For example, claim 1 recites "providing an evaluation instrument
which gauges an individual's current core competency level based on self-
assessment and the input from the assessment of 3rd party respondents in the
areas of work, social and family relationships" to "determin[ e] or measur[ e]
the gaps in perception between self and 3rd party assessment." These steps
of self-assessment and 3rd party evaluations encompass mental processes that
people routinely perform in their minds before they may record their mental
assessments in an evaluation or assessment. See Ans. 3.
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The further steps of "determining or measuring the gaps in perception
between self and 3rd party assessment" and "providing recommendations,
after determinations are made, for the appropriate method or a combination
of methods" that include "further data gathering, eLearning suggestions,
online training references, and coaching suitability" involve mental steps
and processes that supervisors, human resources administrators, trainers, and
others routinely undertake when evaluating employees and others to identify
areas for improvement and then to recommend appropriate education and
training experiences for the employee to pursue. See id. at 3--4.
Similar mental steps and processes are recited in the claimed steps of
"evaluating a team[']s performance and individual member's performance"
by "receiving responses from the respondent to the evaluation instrument"
and "processing the responses into an evaluation report." Managers,
coaches, and others routinely evaluate the team performance of a group of
individuals as well as individual performance of members of the team as
team members to determine how to improve that performance with training,
learning, or coaching recommendations as recited in claim 1. See id. at 4--5.
Appellant does not dispute that claim 1 recites a method of organizing
human activity and mental processes. Instead, Appellant argues the claims
are tied to a particular machine (a computer) as required by Bilski. Br. 15-
16. Appellant also argues that the claimed method is not an abstract idea
because it is an integrated method for an individual's development in a web-
based environment, rather than a long-standing practice. See id. at 17-18.
These arguments concern whether claim 1 recites an integrated
application under the Revised Guidance. We address that issue next.
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Step One, Prong Two: Does Claim 1 Recite an Integrated Application
Under Step One, Prong Two of the Revised Guidance, having found
that claim 1 recites abstract ideas of organizing human activity and mental
processes, we next consider whether claim 1 recites additional elements that
integrate the exception into a practical application. 84 Fed. Reg. 50, 54. "A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." Id.
We agree with the Examiner's findings that claim 1 does not recite
additional limitations sufficient to elevate the abstract ideas of organizing
human activity and mental processes to a patent-eligible application. In
particular, we agree with the Examiner that reciting a generic computer and
its typical components, a password, and set of permissions for a respondent,
are merely instructions to perform the abstract idea on the generic computer
and therefore such steps are insufficient. Final Act. 4; Ans. 31.
In Alice, the Supreme Court addressed this issue and held that "the
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, 573
U.S. at 223. Because claim 1 's recitation of a computer amounts to a mere
instruction to implement the abstract idea on a computer, the addition of a
computer cannot impart patent eligibility. Id. Thus, claim 1 's mere recital
of a computer for performing the claimed abstract concept does not integrate
the judicial exception into a practical application. Indeed, claim 1 recites a
method "capable of execution on a computer" in the preamble.
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Similar analysis and reasoning applies to Appellant's argument that
the claims recite "[a]ll data is provided in a web-based environment through
real time and instantaneous distribution of appropriate recommendations"
and responses are accepted on the web site and processed into a report with
online learning ( eLearning), coaching, and training recommendations. Br.
17-18. Once again, Alice provides guidance on this issue by holding that
limiting the use of an abstract idea to a particular technological environment
does not provide the sort of application that transforms an abstract idea into
a patent-eligible one. Alice, 573 U.S. at 223. Therefore, claim 1 's recital of
a method that can be implemented on the Internet or as a web-based method
also does not integrate the judicial exception into a practical application.
The steps of recording self and third party assessments, extracting and
classifying data therefrom to determine gaps, and using that data to make
training and coaching recommendations are akin to the activities held to be
methods of organizing human activity in TL! Communications. In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016). There, the
methods of recording and storing digital images and transmitting that data
with classification information for further extraction and storage according
to the classification information were held to be a method of organizing
human activity. Id. at 613; see also BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1286 (Fed. Cir. 2018) (holding that method of presenting
summary comparison information based on historical usage data to users to
assist them in inputting data as parameters and values to a database was a
well-established method of organizing human activity). Such methods of
organizing human activity were not considered to be integrated into a
practical application sufficient to make them patent eligible.
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In TL! Communications, the court held that the "mere recitation of
concrete, tangible components is insufficient to confer patent eligibility to an
otherwise abstract idea." TL!, 823 F.3d at 613 (holding that limiting the
abstract idea to a particular environment does not make the claims any less
abstract). In TL!, a "telephone unit," "server," "image analysis unit," and
"control unit" did not represent a solution to a "technological problem"
sufficient to bring the abstract idea into the realm of patentability. Id. In the
parlance of the Revised Guidance, the claim did not integrate the abstract
idea of organizing human activity into a patent eligible practical application.
In BSG, the court held that the claimed method of organizing human
usage activity in the form of database usage information did not improve the
database functionality. BSG, 899 F.3d at 1287-88. Instead, any benefits of
increased speed, efficiency, or relevant materials flow from performing the
abstract idea on a well-known database structure. Id. at 1288.
In Content Extraction, claims were "directed, in part, to an abstract
idea of 'collecting data' despite reciting a scanner and despite the data being
from 'hard copy documents' collected by an 'automated digitizing unit."'
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (cited in BSG, 899 F.3d at 1286,
1287).3 In Two-Way Media, the claims were directed, in part, to the abstract
idea of "sending information," even though the claims concerned "audio/and
or visual information" transmitted over a communications network. Two-
Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1334,
1337-38 (Fed. Cir. 2017) (cited in BSG, 899 F.3d at 1287). Integrations into
practical applications were lacking in all of these cases.
3 The claimed surveys can be completed manually on paper. Spec. 4: 12-14.
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Providing tailored training and learning activities via the Internet also
is similar to a method of providing customized web page content to a user as
a function of a user's characteristics, which was held to be an abstract idea in
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (providing tailored content and information to a user
is a well-known and fundamental business practice similar to advertising).
The court held that a claimed interactive interface that manages web site
content and communicates tailored information to a user based on a profile
was a generic computer element and generic web server that simply provides
web pages to and communicates with a user's computer. Id. at 1370.
Similarly, In re Salwan, 681 F. App'x 938 (Fed. Cir. 2017) held that a
method of storing, communicating, transferring, and reporting patient health
information in a network was an abstract idea that did little more than
automate a method of organizing human activity. Id. at 941. Like the
claimed method in Salwan, the claimed evaluation method obtains and then
stores, communicates, transfers, and reports employee performance related
information regarding the fitness of the employee for particular job category.
Even though the claims in Salwan allegedly overcame inefficient and costly
methods of sending paper patient health information by fax machine or mail,
the claimed elements of a generic "network," "computer program," "central
server," "device," and "server for processing and transferring" were not
sufficient to transform the abstract idea into a patent-eligible invention. Id.
(holding that other claims reciting video conferencing, patient appointment
scheduling, patient registration forms, health-related advertisements, and
allowing physicians to create handwritten papers did not change the result).
In these cases, integrations into practical applications were lacking.
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Similarly, claims reciting the concept of personal management,
resource planning, and forecasting by collecting and analyzing non-business
or business information relevant to end users was held to be an abstract idea
in In re Downing, No. 2018-1795, 2018 WL 6436437, at *4 (Fed. Cir. Dec.
7, 2018) (non-precedential) (citing Elec. Power Grp. V. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) ("The advance [the claims] purport to
make is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions. They are therefore
directed to an abstract idea.").
Essentially, Appellant automated a process for organizing human
activity that organizations use to evaluate their employees and recommend
training and education activities to make their employees more productive.
Such methods also can and have been performed by humans in the human
mind of supervisors, managers, coaches, and others.
Here, the claimed method and its steps of providing self-evaluations
and third party evaluations can be performed entirely in the human mind and
the evaluations merely provide a record of such activity of the human mind.
Furthermore, steps of matching learning, training, and coaching activities to
an employee's particular skills based on evaluations can be done entirely in
the mind of a supervisor or human resources manager or other person. Thus,
the evaluations, reports, and training recommendations all involve processes
that can be performed entirely in the human mind. Indeed, the claimed steps
represent activities otherwise performed by employees, supervisors, human
resources personnel, and others using their mental processes or a computer
implementations of such mental processes.
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Automation of known mental processes have been held to be abstract
ideas. See SmartGene, Inc. v. Advanced biological Labs., S.A., 555 F. App'x
950, 954--55 (Fed. Cir. 2014) (holding that method of selecting a therapeutic
treatment regime for a patient by providing patient information, generating a
ranked listing of available therapies, and generating advisory information for
one or more therapeutic treatment regimes in the ranking was an abstract
idea because the computing device contained - like a doctor's mind - a set
of expert rules for evaluating and selecting from a stored plurality of
different therapeutic treatment regiments and advisory information useful for
treating a patient; in other words, ever step is a familiar part of the conscious
process that doctors can and do perform in their heads) (non-precedential).
No integration was found because "[c]laim 1 does no more than call on a
"computing device," with basic functionality for comparing stored and input
data and rules, to do what doctors do routinely." Id.
In CyberSource Corporation v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011 ), the court held that verifying credit card transactions on the
Internet was an abstract idea that can be performed in the human mind. Id.
at 1372 (holding that applications of human intelligence to the solution of
practical problems is not by itself patentable), cf Br. 18 ( arguing that steps
performed on Internet cannot be performed mentally by a human being).
Alice Step Two: Does Claim 1 Recite an "Inventive Concept"
Having determined that claim 1 recites abstract ideas of organizing
human activity and mental processes without integrating those concepts into
a practical application, we consider the claim elements individually and as
an ordered combination to determine whether additional elements transform
the abstract ideas into a patent-eligible application. Alice, 573 U.S. at 222.
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The Examiner finds that claim 1 recites a generic computer and its
typical components that perform routine and conventional functions of
implementing instructions of the abstract idea on a computer by collecting
and generating data in a development or training environment. Final Act. 4;
Ans. 31. Appellant argues the claimed invention is an integrated method of
managing a participant's and/ or employee's development through individual
and team evaluations in a web-based environment. Br. 18. However, we
find no indication from Appellant as to any aspect of the claimed method
that represents an innovative step, either as an improvement to computer,
Internet, or database functionality, or to personnel evaluations and training.
Mere automation of an abstract idea, without improving a technical
aspect, does not confer patent eligibility on that process. See Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) (holding that "merely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea."); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
716 (Fed. Cir. 2014) (holding that "the use of the Internet is not sufficient to
save otherwise abstract claims from ineligibility under § 101.").
"To salvage an otherwise patent-ineligible process, a computer must
be integral to the claimed invention, facilitating the process in a way that a
person making calculations or computations could not." Bancorp Svcs.,
L.L.C. v. Sun Life Assurance Co. Of Canada (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012). Even claims directed to a computer readable medium are
treated no differently than process claims that are patent ineligible. Id. at
1276, cf, (arguing that claims are patent eligible because they are directed to
"computer-readable media claims").
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The court emphasized that "simply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
insufficient to render the claim patent eligible." Id. at 1278 (citation
omitted). Therefore, where the claims merely employ computers to track,
reconcile, and administer a life insurance policy with a stable value
component, the computer simply performs more efficiently what otherwise
could be accomplished manually and therefore lacks an inventive concept to
make the abstract idea patent-eligible. Id. at 1279; see also SmartGene, 555
F. App'x at 955 (holding that the claim merely calls on a computer to do
nothing that is even arguably an advance in physical implementations of
routine mental information-comparison and rule-application processes.").
"If a claim's only 'inventive concept' is the application of an abstract
idea using conventional and well-understood techniques, the claim has not
been transformed into a patent-eligible application of an abstract idea." BSG
Tech, 899 F.3d at 1290. Here, the term "computer" only appears two times
in the Specification to disclose that, "the response vehicle or tool, surveys or
other forms to be completed by users could be filled out on paper manually
and the results could then be entered into a computer and sent to the web
site, or completed on the web-site by the respondents." Spec. 4: 12-14, see
id. at 9: 6-8 (same). The Specification also discloses that recommendations
for online training, coaching or eLeaming are directly tied to the results of
an individual's or team's evaluation through a proprietary method of sorting
the learning and performance criteria." Id. at 4:4--6. However, claim 1 does
not recite any of the proprietary steps or features that may be inventive.
Even considering the limitations of claim 1 as an ordered combination
does not change the result. No inventive step inheres in the claim.
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Claim 1 recites basic data gathering, processing, analysis, and display
of results of analysis steps that do not elevate an abstract idea to a patentable
application. Claim 1 simply recites the abstract idea of organizing human
activity of personnel evaluation and training that involves mental processes
and may be performed by a generic computer. Alice, 573 U.S. at 225 ("the
relevant question is whether the claims here do more than simply instruct the
practitioner to implement the abstract idea of intermediated settlement on a
generic computer. They do not."); see also Bancorp, 687 F.3d at 1279
("Using a computer to accelerate an ineligible mental process does not make
that process patent-eligible.").
Accordingly, we sustain the rejection of claims 1-14.
Claims 1 and 2 As Unpatentable Over Roecker and Schmidt
Claim 1
The Examiner relies on Roecker to teach all the features of claim 1
except for "areas of work, social and family relationships, and considers
future desired competency levels" and sending an evaluation report to one or
more locations. Final Act. 5-10. The Examiner relies on Schmidt to teach
these features. Id. at 9-11. The Examiner determines that it would have
been obvious to combine these elements for predictable results in the career
services industry of receiving and quantifying the assessments to align and
report identified candidates to job providers. Id. at 11-12.
Appellant argues that Roecker and Schmidt fail to enable a skilled
artisan to make the claimed subject matter without undue experimentation.
Br. 19, 24. Appellant argues that they provide no significant guidance as to
the necessary steps to increase an individual's level of competence through
appropriate claimed training or a team concept. Id. at 20.
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This argument is not persuasive primarily because it is conclusory and
fails to address the Examiner's findings that Roecker and Schmidt teach the
claimed features. Roecker and Schmidt teach these features in at least as
much detail as the Specification describes them. The Specification discloses
that "[a]ll recommendations for online training, coaching, or eLeaming are
directly tied to the results of an individual's or team's evaluation through a
proprietary method of sorting the learning and performance criteria includes
the step of displaying the recommendation and associated documents on a
web site." Spec. 4:4--7. No details of the proprietary method are disclosed.
The Specification also discloses that evaluations, surveys, and forms can be
completed manually on paper and entered into a computer. Id. at 4:12-14.
Appellant also argues that Roecker does not teach or suggest a method
that assesses job eligibility with respect to a "team" concept. Br. 20-22. In
addition, Appellant argues that Roecker does not evaluate a team leader or
individuals in a team environment and does not use even use the term team
to suggest such a limitation. Id. at 21-22.
These arguments are not persuasive in view of the Examiner's finding
that Roecker teaches a method for assessing human capital readiness in the
field of project management, which involves projects worked on by teams,
which are required to complete a project. Ans. 32-33; Final Act. 8. The
Examiner also finds that Roecker refers to teams throughout the reference.
For example, Roecker describes "team size" as a variable in the specific
project information that is provided to a user seeking evaluation of their
skills to participate in such projects. Roecker ,r 49; Ans. 32-33. Roecker
also includes team size in its web-based interface used for job descriptions
and to evaluate an employee's skill level. See Roecker, Figs. 11, 15.
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The Examiner also finds that Roecker evaluates individuals based on
assessments of co-workers. Ans. 33 ( citing Roecker ,r 51 ). The Examiner
reasons that the co-worker assessments necessarily involve an employee's
work on a project as a member of a team, and evaluation of other members
of a team would comprise a team evaluation as claimed. Id. We agree.
Roecker further teaches a job description in Figure 16 that rates an
individual's ability to support team building. Figures 5 and 6 describe skills
that are required of an individual with skill levels involved in team projects
such as managing changes to project scope, communicating a project plan,
interpersonal skills, and leadership.
The Examiner also points out that Roecker allows an administrator to
view all assessments performed of the skill levels of individual employees or
the organization, which would include teams, in the organization to design
organization training and analyze organizational weaknesses and strengths,
which would include team performances, strengths, and weaknesses. Final
Act. 8; Ans. 33-34.
The Examiner's interpretation of this limitation to be satisfied by an
administrator identifying organizational strengths and weaknesses, which
would encompass teams of employees, and skill levels of individuals who
form those teams and collectively comprise a team, is reasonable and also is
consistent with the Specification and claim language. Claim 1 recites only a
step of "evaluating a team[']s performance and individual team member's
performance as the performances relates to the process or system." The
Brief identifies page two, line 14 of the Specification as the description of
this feature. Br. 4. That portion of the Specification states only "behavioral
know-how, performance screen, capability and skill set, job proficiency."
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Appellant's arguments do not propose a claim construction for this
limitation or identify any definition, disclosure, or example of this claimed
subject matter to guide our interpretation. See id. at 20-22.
We find that Roecker teaches evaluating a team's performance as
claimed based on obtaining evaluations and assessments of individuals and
their co-workers, i.e., fellow team members who work with them on a team
and therefore are familiar with their duty performance and job skills on that
team. See Roecker ,r 73. Roecker expressly tracks organization strengths
and weaknesses, which would encompass team performances as claimed.
Id. Roecker also rates skills that involve team performance on projects, e.g.,
address program issues, analyze program variances, approve closure of
projects, assess a program, capture program status, and celebrate program
accomplishments. Id. Fig. 8.
As Appellant argues, the Specification discloses recommendations for
training, coaching, and eLeaming that are tied to results of an individual's or
team's self assessment and/or 3rd party evaluations through a proprietary
method of sorting the assessment and evaluation criteria. Br. 21. Roecker
teaches self-assessments and evaluations of individuals and their skills in the
field of project management involving teams completing projects. Under a
broadest reasonable interpretation, assessing the skills and performance of
individual team members on team projects provides such assessment and a
team evaluation of the teams composed of those individuals as claimed.
Appellant also argues that the claimed methodology is non-existent in
a real time environment through a web-based approach. Br. 21. Appellant
further argues that Schmidt does not determine an individual's current core
competency level or a future desired level. Id. at 22-24.
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These arguments are not persuasive because Roecker and Schmidt
both teach web-based approaches that operate in real time, as the Examiner
correctly finds. Roecker teaches that the method can be implemented in
software on one or more general purpose computers in any applicable
computer language on a computer system that communicates through a
worldwide computer network such as the World Wide Web. Roecker ,r 42.
In one embodiment, the functions may be implemented in a web-based
system. Id. ,r 43. Furthermore, based on the received and processed user
self-assessments and third party evaluations, the method may be linked to
particular training programs that can be offered to users who require training
in a particular skill or set of skills by offering the training automatically after
the assessments are completed. Id. ,r 73; Ans. 39.
Schmidt evaluates core competencies including abilities, skills,
knowledge, and job attributes relevant to a selected job type and provides
online courses to meet deficiencies. Id. Schmidt ,r,r 2, 52, 56. Appellant's
arguments do not address these teachings of Schmidt and therefore do not
apprise us of Examiner error in this regard. See Br. 22-23. Roecker also
teaches core competencies as professional competencies needed to do a job
and that require a particular level (value) of skill or ability. Roecker ,r,r 26,
36, 38, 48, and Figs. 1, 6-8. Individuals are evaluated and gaps are detected
between the individual's self-assessment of these skills compared to third
party evaluations of these professional competency skills. Id. f 72.
Appellant also challenges the Examiner's reason for combining the
teachings of Roecker and Schmidt and alleges that the combined teachings
would remove Roecker's determining eligibility for a job and frustrate the
purpose of Roecker' s system. Br. 24--25.
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We determine that the Examiner's reason for combining teachings of
Roecker and Schmidt is supported by a rational underpinning based on the
teachings of both references to evaluate an individual's skills for a job to
match individual candidates to particular jobs with a reasonable expectation
of success. Final Act. 12; Ans. 37.
Appellant's argument are not persuasive because it misperceives the
rejection. The Examiner is not modifying Roecker's method in a manner
that eliminates any features of Roecker; rather, the combination supplements
the data collection aspects of Roecker that contribute to the eligibility
assessment. Schmidt teaches third party assessments by supervisors, friends,
peers, and family, which correspond to "areas of work, social and family
relationships" as claimed. Final Act. 9-10; see Schmidt ,r,r 32, 33, and Fig.
6. The Examiner also relies on Schmidt to teach sending a report of the
evaluations results to others. Final Act. 1 O; Schmidt ,r,r 65, 28, 43, Fig. 8.
Schmidt teaches that the system determines which job applicants meet the
job requirements based on the self-assessments of skills in paragraph 43 and
their profiles in paragraph 28 and sends a report to the employer. Schmidt
,r 65; see also Roecker ,r 71 (a user can generate a report of skills).
The Examiner correctly finds that both references provide user self-
assessments and seek evaluations of user skills from co-workers and other
third parties and then match those assessments to job descriptions to identify
matches and/or further training to improve individual skills to qualify better
for a job. Final Act. 5-11; Ans. 32-37; Roecker ,r,r 1-5, 25, 30, 40-42, 50,
51, 56, 60, 71-73, and Figs. 1-16; Schmidt ,r,r 2, 33, 39, 42, 43, 46, 55, 56,
61, 62, 65, 69, and 73. Schmidt thus identifies third parties who can provide
evaluations in Roecker' s method. Thus, we sustain the rejection of claim 1.
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Claim 2
Claim 2 depends from claim 1 and recites further steps of managing
real time recommendations for online training, coaching, or eLeaming tied
to results of the assessment evaluation criteria and providing instantaneous
access to training products with recommendations tailored to each person.
Appellant argues that Schmidt does not teach such instantaneous distribution
of training programs but instead provides for such materials to be created to
address individual or organizational objectives and weaknesses such that no
programs are immediately available but must be designed. Br. 26.
This argument is not persuasive in view of Roecker's teaching that an
administrator can view a list of skill levels and employees who have or have
not attained certain levels to design training or to link to particular training
programs that can be offered automatically to users who require training to a
particular skill or set of skills based on the completed assessments. Roecker
,r 73. Appellant's arguments that Schmidt does not teach these features does
not apprise us of error in the Examiner's findings that Roecker does. Final
Act. 12; Ans. 39. Thus, we sustain the rejection of claim 2.
Claims 3-9, 13, and 14
As Unpatentable Over Roecker, Schmidt, and Fox
Regarding claims 3-8, which depend from claim 1, Appellant argues
that these claims recite very specific user rights of a master distributor,
distributor, company, client, and third parties that are more complex than
those taught by Fox, which the Examiner relies on for these features. Br. 31.
Appellant also argues that it would not have been obvious to combine Fox
with Roecker and Schmidt in the manner specified. Id. at 27.
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Appellant's arguments are not persuasive for the following reasons.
First, Roecker largely teaches the use of different levels of access for a user,
a supervisor, an administrator, and a third party involving user profiles and
passwords and the like recited in claims 3-9. Roecker ,r,r 3 3, 51. For
example, third parties that provide assessments of individuals may see the
same job information as a user who performs the self-assessment, but the
third party may not access other parts of the system. Id. ,r 51. The third
party cannot continue to use any other function and is logged out of the
system. Id. ,r,r 54, 56. An administrator may add, delete, or edit the job
descriptions, job ladders, competencies, project profiles, and skills by having
access to the add, delete, and/or edit functions while the user may be limited
only to viewing the functions and performing assessments. Id. ,r 57. Users
can manage their skill profiles. Id. ,r 60. Administrators can view a list of
skill levels for all employees and see all assessments performed for a user in
detail. Id. ,r 73.
Schmidt also teaches the use of employer password and access rights
for an employer's user account and profile and data. Schmidt ,r 28. Users of
the system Gob applicants) also may access the system with a usemame and
a password to access personal and professional information. Id. ,r,r 32, 43.
Job applicant users also may manage their accounts, passwords, and the like.
Id. ,I 43.
Consistent with these teachings, Fox teaches a central processing
computer that controls what information is authorized and allowed to be
provided to a requesting individual or entity, student, educational provider,
education materials provider, or education tools provider or education
computer-enabled tools provider, payer, or intermediary. Fox ,r 328.
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We hold that the Examiner had a reasonable basis for determining that
the combination of these teachings render obvious the limitations recited in
claims 3-8. The Specification provides no disclosure of these features as
argued by Appellant beyond the recitation of these features in the original
claims 3-8. We find no definition or other disclosure of a master distributor
level of rights, a distributor level of right, a company level of rights, a client
level of rights, or a third party level or rights that would suggest a narrower
reading of these limitations than applied by the Examiner.
As discussed above, Roecker and Schmidt teach systems that allow
users and employers to establish accounts with passwords to access certain
information and control access of selected others to such information. In
addition, Roecker teaches a further level of administrator that corresponds to
either a master distributor and/or a distributor of rights to others and also
renders obvious such additional levels. Fox teaches further delineation of
tiers or levels of authorized access to information by individuals or entities,
which would encompass all of the claimed categories. Fox ,r 328. Fox also
teaches that central processing computer 10 can determine for particular
information requested by an individual or entity whether access is allowed or
authorized to obtain, change, alter, or just access any information contained
in a student's or individual's records or file. Id. The references also teach to
provide access to web-based materials illustrated as a series of screens or
levels of a user interface, which would correspond to a link as claimed.
Appellant's argument that claims 3-8 recite several very specific and
narrow claim limitations for each level (Br. 31) does not apprise us of error
in the Examiner's findings on this record. 37 C.F.R. § 4I.37(c)(l)(iv); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
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The Examiner's reason for combining teachings of Fox with those of
Roecker and Schmidt to render obvious claims 3-8 also is supported by a
rational underpinning of providing a methodology of setting up password
permissions to safeguard private information and grant access based on a
specific individual or entity's purpose and role. Final Act. 16; Ans. 39--41.
This rationale is supported by the teachings of the references of this practice
in such systems that collect records of individual's personal information to
allow individuals and entities with a need to know to access the information
that they need to know. Thus, we sustain the rejection of claims 3-8.
Claim 9
Independent claim 9 recites a system that includes a password having
a set of permissions to manage distribution of recommendations for online
training, coaching recommendations, or eLeaming tied to results of current
competencies versus desired competencies. Appellant argues that there is no
discussion of recommendations being provided to a user in Roecker. Br. 28.
As discussed above, Roecker, paragraph 73 teaches that the method of
assessing individual skills and comparing those skills to job descriptions can
be linked to particular training programs that are offered to users who need
training to a particular skill or set of skills for a job and the user is offered
the training automatically after the assessments are completed. Roecker also
teaches that this recommended training is provided based on an assessment
of a user's skills compared to a current job description with a listing of skills
that need improvement for a user to achieve a satisfactory rating on a current
job or to meet requirements for the next job in the job ladder. Id. ,r 71; Ans.
41--42. Appellant's arguments do not apprise us of error in the Examiner's
findings in this regard. Thus, we sustain the rejection of claim 9.
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Claims 13 and 14
Independent claim 14 recites a method that provides immediate, real
time recommendations for online training, coaching, or eLeaming based on
assessment evaluations and providing assessment that are sold to businesses
and individuals. Appellant argues that Roecker does not teach evaluating
criteria based on current competencies versus desired competencies in the
performance of an individual's proficiency or respondent's goals and Fox
does not teach the sale of assessments and evaluations. Br. 29-30.
As discussed above, Roecker teaches to assess and evaluate a user's
performance skills and competencies for a particular job description and to
identify skills that need improvement to improve ratings and get promoted
and then to automatically recommend training to individuals for such skills.
Roecker ,r,r 71, 73. Appellant's arguments do not apprise us of error in the
findings of the Examiner in this regard. Ans. 43.
The Examiner finds that Fox teaches the provision of data provided by
questionnaires and the provision of educational products and services and
further teaches that the system can act as a clearinghouse for the sale of such
education related services, products, and/or goods. Final Act. 24; Ans. 43;
Fox ,r,r 181, 182, and 219. Appellant's arguments do not apprise us of error
in the Examiner's findings in this regard. We also agree with the Examiner
that Appellant's argument that Fox does not recommend such services or
products for sale to a user based on their performance or development (Br.
29) is not commensurate with the scope of claim 14 (Ans. 43) and therefore
is not persuasive. Thus, we sustain the rejection of claim 14.
We also sustain the rejection of claim 13, which depends from claim 9
and which is not argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Claims 10---12
As Unpatentable Over Roecker, Schmidt, Fox, and Levin
Appellant does not present arguments for this rejection of claims 10-
12 as unpatentable over Roecker, Schmidt, Fox, and Levin. See Br. 14--33.
Therefore, we summarily sustain this rejection.
DECISION
We affirm the rejection of claims 1-14 as directed to a judicial
exception to patentability under 35 U.S.C. § 101.
We affirm all prior art rejections of claims 1-14.
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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