Ex Parte Divakaran et al

Patent Trial and Appeal Board

Dec 13, 2018

13755783 (P.T.A.B. Dec. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/755,783 01/31/2013
14824 7590 12/17/2018
Moser Taboada/ SRI International
1030 Broad Street
Suite 203
Shrewsbury, NJ 07702
FIRST NAMED INVENTOR
Ajay Divakaran
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.
SRI6734-3 1884
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/17/2018 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):
docketing@mtiplaw.com
llinardakis@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AJAY DIVAKARAN, BEHJAT SIDDIQUIE, SAAD
KHAN, JEFFREY LUBIN, and HARPREET S. SA WHNEY
Appeal2017-010081
Application 13/755,783
Technology Center 3700
Before JENNIFERD. BAHR, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--4 and 6-18. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 SRI International is the Applicant and is identified as the real party in
interest. Appeal Br. 3.
Appeal2017-010081
Application 13/755,783
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for predicting a behavioral event to occur in an
interaction involving at least two participants, at least one of the
participants being a person, the method implemented by
instructions executable by a computing system, the instructions
compnsmg:
detecting, from multi-modal data captured by one or more
electronic sensing devices, a plurality of different behavioral
cues expressed by the participants during the interaction;
by machine learning-based mathematical analysis,
combining at least some of the captured behavioral cues of at
least two different modalities of the multi-modal data, to create
a plurality of combinations of behavioral cues over a plurality of
temporal interaction sequences;
analyzing, over a plurality of temporal interaction
sequences, variations in the combinations of behavioral cues;
determining the nature of the interaction based on the
analysis of the temporal interaction sequences;
predicting the behavioral event to occur in the interaction
based on the determined nature of the interaction; and
communicating a suggestion relating to the predicted
event to one or more of the participants,
wherein the analyzing further comprises semantically analyzing
the multi-modal data to interpret content of the multi-modal data
to determine most likely intended meaning of content having
multiple possible interpretations.
REJECTI0N2
Claims 1--4 and 6-18 are rejected under 35 U.S.C. § 101.
2 A rejection of claim 6 under 35 U.S.C. § 112, second paragraph, is
withdrawn by the Examiner. Adv. Act. 2; Final Act. 2. A rejection of
claims 1--4 and 6-18 under 35 U.S.C. § 103(a) is withdrawn by the
Examiner. Ans. 4; Final Act. 5.
2
Appeal2017-010081
Application 13/755,783
DISCUSSION
Appellant argues claims 1--4 and 6-18 as a group. Appeal Br. 5-16.
We select claim 1 as representative of the group and claims 2--4 and 6-18
stand or fall with claim 1. 37 C.F.R. § 41.37 (c)(l)(iv).
The Supreme Court has established a two part framework for
determining whether a claim recites patent-eligible subject matter. Alice
Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208; 134 S. Ct. 2347, 2350
(2014 ). First, the claims are examined to determine whether they are
directed to a patent ineligible concept such as an abstract idea. Id. If so, the
claim elements are considered both individually and as an ordered
combination to determine whether they transform the claim into a patent-
eligible application. Id.
The Examiner finds that the claims "are directed to abstract ideas in
the form of an idea of itself, analogous to the mathematical algorithm found
to be patent ineligible in, e.g., Parker v. Flook." Final Act. 3. The Examiner
finds that claim 1 "claims an abstract idea directed to a method for
predicting a behavioral event" comprising the steps recited in claim 1. Id.
The Examiner further finds that the
claims do not include additional elements that either alone or in
combination are sufficient to amount to significantly more than the
judicial exception because while, e.g., a "computing system",
"computing device," and "electronic sensing devices" [are] claimed
these are generic, well-known, and conventional computing devices
and are claimed to provide generic, well-known, and conventional
computing functions such as executing instructions and sensing data.
In other words, Applicant has claimed a generic computerized
embodiment of its abstract idea that is patent ineligible, instead of a
technological improvement to the computing elements themselves ....
Applicant's abstract idea could be performed by one human being
3
Appeal2017-010081
Application 13/755,783
simply observing a conversation and performing the claimed method
steps in his/her head and/ or on paper.
Id. at 4.
Alice Step 1
Appellant contends that the claims are not directed to an abstract idea.
Appeal Br. 7. Appellant first argues that the "claims are directed in part to
the technical problem of determining future behavior of at least one
participant of an interaction." Id. According to Appellant, the case of
Parker v. Flook, cited by the Examiner, is distinguishable because the
"claims do not imply or invoke the use of an algorithm." Id. Appellant
further argues that the "claims recite unknown, patentable technical
limitations over and above what the Examiner is alleging is an algorithm"
and "as evidenced by at least the lack of prior art rejection against
Appellants' claims, it should be clear that ... Appellants' claims recited
unknown, patentable technical limitations over and above what the
Examiner is alleging is an algorithm." Id. at 11. Appellant alternatively
argues that the "claims are analogous with the claims in the McRO case in
which the [Federal Circuit] determined that claim 1 of McRO is not directed
to an abstract idea." Id. at 12. In support of this argument, Appellant argues
that the recitations in claim 1 of "'by machine learning-based mathematical
analysis,' 'combining at least some of the captured behavioral cues' ...
'analyzing, over a plurality of temporal interaction sequences,' ... and
'determining the nature of the interaction'" provide "meaningful
requirements for the combination and analysis of the behavioral cues similar
to the meaningful requirements in claim 1 of McRO." Id. According to
Appellant, these limitations "improve[ s] the technology and not the use of a
computer." Id. at 13.
4
Appeal2017-010081
Application 13/755,783
The Examiner responds that
the heart of Appellant[' s] claimed process is a series of solutions of
mathematical problems. As outlined in Appellant's specification, in
order to combine the captured behavioral cues, analyze the variations
in those cues, determine the nature of the subject interaction, and
predict the next behavioral event to occur ... Appellant discloses ...
what are called Conditional Random Fields or CRF's.
Ans. 6 ( citing Spec. ,r 72).
The Examiner further directs us to paragraph 75 of Appellant's Specification
that details the mathematical algorithms used to determine CRF's. Id. at 7.
With respect to the McRO case, the Examiner responds that the claims in
"McRO concerned computerized animation (an inherently technical field
because it necessarily requires a computer)" and "[i]t is unclear what
Appellant is contending here is 'the technology."' Id. at 12. Further, the
Examiner responds that Appellant's "claimed 'computing system' is not
itself improved as the result of embodying Appellant's claimed process." Id.
In the Reply Brief, Appellant argues it is "not claiming an algorithm
to analyze combinations of behavioral cues, but instead claims that
variations in the combinations of behavioral cues are analyzed over a
plurality of temporal interaction sequences." Reply Br. 3. In support of this
argument, Appellant refers us to the limitations in claim 1 of "determining
the nature of the interaction based on the analysis of the temporal interaction
sequences" and "predicting the behavioral event to occur in the interaction
based on the determined nature of the interaction." Id. In order to further
distinguish Parker v Flook, Appellant argues that the "claims are not
claiming an algorithm and it is not an algorithm that makes at least
Appellants' independent claims novel and inventive." Id. at 4. For the
5
Appeal2017-010081
Application 13/755,783
following reasons, we agree with the Examiner that claim 1 is directed to an
ineligible abstract idea for the purposes of step 1 of the Alice framework.
First, to the extent that Appellant contends that claim 1 recites patent
eligible subject matter because of the Examiner's withdrawal of the rejection
of the claims under 35 U.S.C. § 103(a) (Ans. 4), we note that the Federal
Circuit indicates the question of eligibility under 35 U.S.C. § 101 is separate
from the question of patentability under 35 U.S.C. § 103(a). See Two-Way
Media Ltd. v. Comcast Cable Comm 'ns, LLC, 874 F.3d 1329, 1339-40 (Fed.
Cir. 2017) ("Eligibility and novelty are separate inquiries.").
Second, we agree with Appellant that, unlike claim 1, the claims at
issue in Parker v. Flook recited a specific mathematical algorithm. See
Parker v. Flook, 437 U.S. 584, 596 (1978)(Appendix to Opinion of the
Court). The fact that a specific algorithm is not recited in claim 1, however,
is not persuasive because as explained by the Supreme Court in Parker v
Flook, "[i]t would make that determination of patentable subject matter
depend simply on the draftsman's art and would ill serve the principles
underlying the prohibition against patents for 'ideas."' Id. at 593. In this
case, claim 1 specifically recites "machine learning-based mathematical
analysis." Appellant fails to persuasively explain how "machine learning-
based mathematical analysis" is performed other than with mathematical
algorithms. In addition, the Examiner correctly finds this analysis is
performed with the algorithms disclosed in paragraph 75 of Appellant's
Specification. See Ans. 6-7. Thus, the lack of a specific algorithm in claim
1 does not persuade us of Examiner error.
Third, the Federal Circuit has held "that claims focused on 'collecting
information, analyzing it, and displaying certain results of the collection and
6
Appeal2017-010081
Application 13/755,783
analysis" are directed to an abstract idea." SAP AMERICA, Inc. v.
INVESTPIK, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) citing Electric
Power Group, LLC v. Alstom S.A., 830 F. 3d 1350, 1353 (Fed. Cir. 2016).
Claim 1 is directed to collecting information in the "detecting step,"
analyzing the information "by machine learning-based mathematical
analysis," "predicting the behavioral event to occur," and "communicating a
suggestion relating to the predicted event" and is, therefore, not
distinguishable from the claims found abstract in SAP and Electric Power
Group. Appellant's reliance on McRO is also not persuasive for the reasons
stated by the Federal Circuit in SAP. There the Federal Circuit noted that the
claims in McRO improved "how the physical display operated ( to produce
better quality images), unlike ( what is present here) a claimed improvement
in a mathematical technique with no improved display mechanism." SAP at
1167. Likewise, in this case, Appellant has not persuasively shown that
claim 1 improves a computer display, other computer hardware, or software
for operating a computer.
For all of these reasons, Appellant has not apprised us of Examiner
error in the determination that claim 1 is directed to an abstract idea.
Alice Step 2
For step 2, we analyze whether the claim elements, considered both
individually and as an ordered combination, transform the claim into a patent-
eligible application.
Appellant first contends that the "claims recite significantly more than
an abstract idea" because "the Examiner was unable to find any prior art or
court cases to evidence that the Appellants' claim elements are well-known,
conventional and/or routine." Appeal Br. 14. Appellant points to the
7
Appeal2017-010081
Application 13/755,783
machine learning based mathematical analysis, analyzing and determining
claim steps in support of this contention. Id. at 13. These steps entail the
abstract idea of collecting information, analyzing it with mathematical
algorithms and displaying results but step 2 requires us to examine the claim
for "an inventive concept in the non-abstract realm." SAP 898 F.3d at 1168.
Claim 1 recites two non-abstract elements, i.e., "a computing system" and
"electronic sensing devices." Appellant's Specification contains numerous
references to a "computing system" but provides no disclosure that the
computing system is anything other than a general purpose computer with a
storage media. See e.g., Spec. ,r,r 22, 24. Appellant's Specification discloses
that the electronic sensing device may include "a microphone, a video
camera, a still camera, an electro-optical camera, a thermal camera, a motion
sensor. .. an accelerometer, a proximity sensor, a temperature sensor, a
physiological sensor ... and/or any other type of sensor that may be useful
to capture data that may be pertinent to the analysis." Appellant does not
provide persuasive evidence or argument that either the computing system or
electronic sensing devices disclosed in the Specification are anything other
than well-known, conventional and/or routine. See Appeal Br. 13-15.
Based on the Specification, the Examiner's finding (Final Act. 4) that these
claim elements are well-known, conventional and/or routine is supported by
a preponderance of the evidence. See Berkheimer v. HP Inc., 881 F.3d 1360,
13 68 (Fed. Cir. 2018). The limitations of claim 1, considered individually
and as an ordered combination, thus, "do not 'focus ... on [] an
improvement in computers [ or electronic sensors] as tools, but on certain
independently abstract ideas that use computers as tools." SAP 898 F.3d at
1168, citing, Electric Power, 830 F3d at 1354.
8
Appeal2017-010081
Application 13/755,783
Appellant further contends that the "claims also result in
improvements in another technology field or technical field ... the technical
fields of sales or customer service." Appeal Br. 14--15. This contention is
not persuasive because even if sales or customer service could be considered
technical fields, claim 1 is not limited to those fields and, thus, the
contention is not commensurate with the scope of claim 1. Appellant next
contends that "the claims do not preempt the art to which they are directed.
Id. at 15. This contention is not persuasive because Appellant does not
persuasively explain the relevance of preemption to the two step Alice
framework. Moreover, Appellants' arguments regarding preemption are
resolved by our § 101 analysis. See Ariosa Diagnostics, Inc. v. Sequenom
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also Two-Way Media, 874
F.3d at 1339 (where patent claims are deemed patent ineligible, "preemption
concerns are fully addressed and made moot").
Conclusion
We have considered all of Appellant's contentions and determine that
Appellant has not apprised us of Examiner error in connection with the
determination that claim 1 is directed to an ineligible abstract idea.
Therefore, we sustain the rejection of claim 1 under 35 U.S.C. § 101.
Claims 2--4 and 6-18 fall with claim 1.
DECISION
The Examiner's decision rejecting claims 1--4 and 6-18 is affirmed.
9
Appeal2017-010081
Application 13/755,783
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
10