Ex Parte DeYoung et al

Patent Trial and Appeal Board

Feb 7, 2018

12701850 (P.T.A.B. Feb. 7, 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.
12/701,850 02/08/2010 Dennis C. DeYoung 20091228USNP-XER2739US01 1896
62095 7590 02/07/2018
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
02/07/2018 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 DENNIS C. DeYOUNG,
MANOKAR VELAYUTHAM, and MAURICE BICHE1
__________________

Appeal 2017-002923
Application 12/701,850
Technology Center 3700
____________________

Before JAMES P. CALVE, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1–6, 8–14, and 16–24. Appeal Br. 7–14. Claims 7
and 15 are cancelled. Id. at 18, 22 (Claims Appendix). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFRIM.

1 Xerox Corporation is identified as the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claims 1, 9, and 16 are independent. Claim 1 is shown below.
1. A system for providing an adjusted curriculum
pace via an interactive communication to a user device, the
system comprising:
a remote server computer for receiving marked assessments
sent from a scanner at a multifunction device, the server computer
comprising a processor and a database that stores rubrics for grading
the marked assessments and previously administered assessments
wherein the server computer:
processes the marked assessments using the rubrics to
determine a first pace at which each of the plurality of topics is taught
by a user by comparing a frequency of topic-related problems
appearing over a first timeline for a course;
using the previously administered assessments, compare a
percentage of the topic-related problems relative to other non-topic-
related problems administered in a previous course where the topic
was mastered over a second timeline;
using the second timeline, determine a time when emphasis
peaked on the at least one topic;
in response to the topic peaking later on the second timeline
than the first timeline, adjusting the pace to match the a second pace
of the previous course; and,
transmits the adjusted pace over the network to a user
workstation associated with the user, wherein the transmission of the
adjusted to the user workstation assists the user for planning a
curriculum[.]

Appeal Br. 15 (Claims Appendix).

REJECTIONS
Claims 1–6, 8–14, and 16–24 are rejected as being directed to patent
ineligible subject matter under the judicial exception to 35 U.S.C. § 101.
Claims 1–6 and 8 are rejected under 35 U.S.C. § 112, first paragraph,
for failing to comply with the written description requirement.
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ANALYSIS
Claims 1–6, 8–14, and 16–24
As Patent Ineligible Subject Matter
Appellants argue claims 1–6, 8–14, and 16–24 as a group. Appeal
Br. 10–13. We select claim 1 as representative, with claims 2–6, 8–14, and
16–24 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that the claims are directed to an apparatus or an
article of manufacture. Final Act. 2. Regarding claim 1, the Examiner finds
that the claimed subject matter is directed to organizing and comparing data,
which can be performed mentally and is an idea of itself. The Examiner also
finds that the claimed steps are comparable to using categories to organize,
store, and transmit information in Cyberfone or to comparing new and stored
information and using rules to identify options in SmartGene. Id. at 3. The
Examiner further finds that the claimed use of a remote server, scanner of a
multifunction device, database, and processor involve generic computer
components according to well-understood, routine, conventional activities
previously known in the industry. Id. The Examiner further determines that
transmitting the adjusted pace over the network to a user’s workstation is a
normal function of a computer and examples relied on by Appellants from
the PTO Interim Guidance are not based on precedential cases. Ans. 10–11.
To determine patent-eligibility, we perform a two-step analysis. First,
we determine if the claims are directed to a patent-ineligible concept like an
abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
(2014). If so, we determine if the claims contain an “inventive concept” that
transforms the abstract idea into a patent-eligible application. Id. at 2357.

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Alice Step One: Are the Claims Directed to an Abstract Idea?
We agree with the Examiner that the claims are directed to an abstract
idea of collecting, organizing, analyzing, and displaying data. Illustrative
claim 1 recites a remote server computer that receives marked assessments
(e.g., tests taken by students or applicants for a position, Spec. 6:6–9). The
server processes (grades) the marked assessments with rubrics (id. 6:19–7:2)
and determines a pace at which topics are taught by comparing a frequency
of topic-related problems over a first timeline to problems administered in a
previous course where the topic was mastered. The server adjusts the pace
to match the second pace of the previous course if the topic peaked later in
the second timeline than the first timeline and transmits the adjusted pace
over the network to a user workstation. Appeal Br. 15 (Claims Appendix).
It is well-settled that such processes are drawn to an abstract idea.2
E.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed.
Cir. 2016) (collecting and analyzing information and presenting results are
abstract ideas); Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (claims drawn to
abstract idea of collecting data, recognizing certain data in the set, and
storing recognized data in memory); Cyberfone Sys. LLC v. CNN Interactive
Gp., 558 F. Appx. 988, 992 (Fed. Cir. 2014) (non-precedential) (same).

2 Although Appellants have argued the claims as a group, and we select
claim 1 as representative of the group, we also determine that computer-
readable medium claims 9–14 and educational assessment system claims
16–20 are directed to the same abstract ideas of collecting and analyzing
marked assessments at a remote server, determining first and second target
paces, and output the target pace. See In re TLI Comm’ns. LLC Patent
Litig., 823 F.3d 607, 610 (Fed. Cir. 2016) (noting other independent claims
recite substantially the same concept as apparatus and system claims).
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Limiting the use of such abstract ideas to a particular technological
environment does not make the abstract ideas patent-eligible. E.g., Alice,
134 S. Ct. at 2358; Elec. Power Grp., 830 F.3d at 1353.
That claim 1 is directed to a statutory category is not determinative of
its patent-eligibility (see Appeal Br. 11 (arguing that a patent-eligible claim
in a Google hypothetical in the PTO Interim Guidance was directed to a
process)) because we look “to the underlying invention for patent-eligibility
purposes.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada
(U.S.), 687 F.3d 1266, 1276–77 (Fed. Cir. 2012) (quoting CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011)).
We also agree with the Examiner that claim 1 is directed to an abstract
idea involving mental processes that can be performed in the human mind or
by a person using pen and paper. Final Act. 3. Indeed, Appellants disclose
that the present disclosure is directed to tracking the progress of an educator
through an educational curriculum and such “pacing” of the instruction “is a
skill that develops with experience” and can be a challenge for experienced
educators as well. Spec. 1:22–2:6.
Here, the claims recite the use of server computers and scanners to
collect and process data using processes that can be performed in the human
mind or by a person using pen and paper, perhaps as teachers have done for
years. The claimed “multifunction device” is disclosed to be a device that
“includes printing, scanning and hardware processing devices that provide
printing, scanning, and processing functionality.” Id. at 12:22–23. Thus, the
multifunction device scans assessments that it receives and generates images
of the assessments. Id. at 13:11–18. Persons can do this task in their mind.
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The remote server receives marked assessments from a scanner of the
multifunction device and scores the assessments using rubrics. Id. at 8:20–
9:2 15:15–22. Thus, the marked assessments are scored as a teacher might
do. Id. at 6:9–11 (the assessment may be typed or handwritten).
The claimed processing and comparison steps can be done by humans
in their minds or using paper and pen. Determining a first pace or a second
pace and peaking of emphasis merely involves marking the number of times
that a particular topic/problem/category appears in each assessment on a
graph (e.g., long division, fractions, time and distance, number naming, id.
20:19–21:8, Fig. 4) and calculating the frequency (percentage) at which
particular topics of interest appear compared to other non-related topics over
time (months of the year) as claimed (id. at 21:9–21, Fig. 5). A person can
perform these steps mentally or by plotting these items using pen and paper.
Mental processes that can be performed in the human mind or using
pen and paper are, without more, not patent-eligible. CyberSource, 654 F.3d
1371–72; Elec. Power, 830 F.3d at 1354 (analyzing information using steps
people go through in their minds or by mathematical algorithms, without
more, essentially are mental processes within the abstract idea category).
Alice Step Two: Do the Claims Contain an “Inventive Concept”?
Merely applying such abstract ideas to generic computers does not
make the abstract ideas patent-eligible either. E.g., Alice, 134 S. Ct. at 2358;
Elec. Power, 830 F.3d at 1355; Bancorp, 687 F.3d at 1278. Nor does using
scanners or other hardware as basic tools, without improvements, render the
abstract ideas patent-eligible. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1245 (Fed. Cir. 2016) (scanner and voice recognition) (citing Content
Extraction); Cyberfone, 558 F. Appx. At 992–993 (telephone).
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Because the claimed system involves the automation of a process that
previously was performed largely by teachers and others mentally or with
pen and paper and now is automated with conventional computers, scanners,
networks and displays that make basic computations and gather, send, and
present desired information, we agree with the Examiner that claim 1 lacks
an inventive step to transform the abstract ideas into patent-eligible subject
matter. See Elec. Power, 830 F.3d at 1355; Bancorp, 687 F.3d at 1278.
Considered as individual elements, claim 1 recites generic computer
components such as “a remote server computer” and “scanner” that perform
conventional functions of receiving or collecting data and processing marked
assessments using rubrics to determine a first pace via data extraction and
graphing. The server compares the first pace to the pace of another person
who taught the subject matter previously and adjusts the first pace to match
the second pace if the second pace peaked later than the first pace.
Considered as an ordered combination, claim 1 involves collecting,
processing, and presenting data using generic computer components that
perform conventional functions. In other words, claim 1 does not recite an
improvement in these hardware or software components to perform the data
collection, analysis, and display. “Nothing in the claims, understood in light
of the specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information.” Elec. Power, 830 F.3d at 1355.
To the extent that the claimed server and scanner are specialized
processing systems (see Reply Br. 4; Appeal Br. 12–13), claim 1 recites only
conventional functions. Appellants assert that claim 1 recites an algorithm’s
functionality. Appeal Br. 10 (responding to 35 U.S.C. § 112, ¶ 1 rejection).
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Appellants have not explained how the claimed system improves the
functioning of the remote server, scanner, or display. That the server may be
“specially programmed to perform the limitations recited in the claims” is
not sufficient to establish an inventive concept where the limitations involve
nothing more than conventional functions computers perform of collecting,
processing, calculating, storing, and displaying data. The claims do not
improve the functioning of the remoter server. See Alice, 134 S. Ct. at 2359.
In view of this fact, the mere statement that the “remote server computer”
and “the scanner at a multifunction device” are specialized processing
systems that perform more than generic functions of a computer (Reply Br.
4) is not persuasive absent some evidence of this specialized operation.
Multifunction device 104 provides printing, scanning, and processing
functionality, scans marked assessments submitted to it, generates an image
of the scanned assessment, and stores the image in local storage or database
110. Spec. 12:22–23, 13:11–18. To the extent the scanner or multifunction
device provide any specialized, nonconventional computer function, the
claims do not recite any such alleged improvements or specialized functions.
The claimed database stores rubrics for grading assessments. It can be
a hard drive or a removable storage device such as a CD-ROM for storing
information. Id. at 16:8–10.
The claimed remote server computer processes marked assessments to
determine a first pace, which the Specification discloses involves identifying
the number of times (frequency) with which each pertinent topic/problem is
addressed in an assessment and mapping that frequency over time in months.
Id. at 20:19–21:21, Figs. 4, 5. Separate plots can be done for each teacher
and different paces identified from the underlying assessment data. Id.
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The claimed generic computer components merely carry out the
claimed abstract idea, which is not sufficient. Two-Way Media Ltd. v.
Comcast Cable Comm’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017);
Apple 842 F.3d at 1245 (“Here, Amaranth claims no more than the use of
existing handwriting and voice capture technologies using a computer
system.”); Content Extraction, 776 F.3d at 1348 (the use of a scanner and
other digitizing device to extract data from a document is well-known).
“The claims in this case do not even require a new source or type of
information, or new techniques for analyzing it.” Elec. Power, 830 F. 3d at
1355. Nor do the claims require any allegedly inventive programming. Id.
Instead, the claimed system tracks the progress of an educator through a
curriculum of a particular subject like geometry, calculus, and history. Spec.
4:22–5:2. Progress is based on when the topics in the curriculum are taught
and how well assessment-takers (students) perform. Id. at 5:13–23.
Even if some features of the abstract idea are novel in the field of
education, such issues of novelty and obviousness are separate from patent
eligibility. Two-Way Media, 874 F.3d at 1339–40 (“Eligibility and novelty
are separate inquiries.”). However, the claims are directed to collecting data,
extracting pertinent data, categorizing the data, graphing the data over time,
comparing a graph of one educator to that of another, and adjusting the pace
of the first educator to that of the second educator. That a computer can
implement data gathering and manipulation more efficiently does not make
the abstract idea a patent-eligible concept. Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[M]erely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea.”).
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As the Federal Circuit recently held,
Our prior cases have made clear that mere automation of
manual processes using generic computers does not constitute a
patentable improvement in computer technology. In those
cases, “the focus of the claims is not on such an improvement in
computers as tools, but on certain independently abstract ideas
that use computers as tools.”

Credit Acceptance Corp. v. Westlake Svcs., 859 F.3d 1044, 1055 (Fed. Cir.
2017). Here, claim 1, whether considered for its individual elements or as
an ordered combination, does not add enough to transform the abstract idea
to which claim 1 is directed.3 Elec. Power, 830 F. 3d at 1354.
Thus, we sustain the rejection of claims 1–6, 8–14, and 16–24.
Claims 1–6 and 8
For Lack of Written Description
Because claims 1–6 and 8 are directed to patent-ineligible subject
matter, we do not reach the rejection of those claims under 35 U.S.C. § 112,
first paragraph. See In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009); Ex
parte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential).
DECISION
We affirm the rejection of claims 1–6, 8–14, and 16–24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

3 In view of the foregoing, Appellants’ arguments that the claimed system is
analogous to hypothetical claim that was viewed to be patent-eligible in the
PTO’s Interim Guidance (Appeal Br. 10–13) is not persuasive. Ans. 10–11.