Ex Parte Dohring et al

Patent Trial and Appeal Board

Jul 12, 2018

12946627 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/946,627 11/15/2010
21971 7590 07/16/2018
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
FIRST NAMED INVENTOR
Doug Dohring
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.
40288-706.201 1355
EXAMINER
HUMPHREY, MICHAEL C
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/16/2018 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUG DOHRING, WILLIAM McCAFFREY,
STEPHANIE YOST, DAVID HENDRY, LEE BORTH and
NATHAN DROBNACK
Appeal 2016-003423
Application 12/946,627
Technology Center 3700
Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI and
PAUL J. KORNICZKY, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1 STATEMENT OF THE CASE
2 At least one of the claims of the underlying application being twice-
3 rejected, the Appellants 1 appeal under 35 U.S.C. § 134(a) from the
4 Examiner's decision rejecting claims 1, 5 and 8--44. We have jurisdiction
5 under 35 U.S.C. § 6(b ).
The Appellants identify the real party in interest as Age of Leaming,
Inc. (See "Appellant's Brief under 37 C.F.R. § 41.37," dated June 12, 2015,
at 3).
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Application 12/946,627
1 We sustain the rejection of claims 1, 5 and 8--44 under 35 U.S.C.
2 § 101 as being directed to ineligible subject matter. (See Examiner's
3 Answer, mailed Dec. 14, 2015 ("Ans."), at 2-5).
4 We do not sustain the rejections of claims 1, 5, 8-19, 21-23, 25-34,
5 36 and 42--44 under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over
6 LoSasso (US 6,755,659 B2, issued June 29, 2004), Mansfield (US
7 2006/0105313 Al, publ. May 18, 2006) and Glezerman (US 2003/0207237
8 Al, publ. Nov. 6, 2003); of claims 20 and 24 under§ I03(a) as being
9 unpatentable over LoSasso, Mansfield, Glezerman and Snyder (US
10 2008/0057482 Al, publ. Mar. 6, 2008); or of claims 35 and 37--41 under
11 § I03(a) as being unpatentable over LoSasso, Mansfield, Glezerman and
12 Woolf(US 2008/0254438 Al, publ. Oct. 16, 2008). (See Non-Final Office
13 Action, mailed Dec. 15, 2014 ("Non-Final Act."), at 3-13).
14
15 THE CLAIMED SUBJECT MATTER
16 The appealed claims are directed to computer-based systems and
1 7 methods permitting a mentor to customize learning content for a student.
18 (See Spec., para. 23). Claims 1, 43 and 44 are independent. Claim 44
19 recites:
20 44.
21
22
23
24
25
26
27
28
29
A method of facilitating the educational development of a learner
compnsmg: providing executable instructions to a digital
processing device comprising an operating system configured to
perform executable instructions a processor, and a memory
device to create a web-based educational environment for a
learner aged 1 year to 10 years old, wherein the educational
environment comprises: at least one area of skill, interest, or
expertise; a plurality of learning activities associated with each
area of skill, interest, or expertise, the learning activities selected
from the group consisting of: songs, books, poems, puzzles,
2
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1 games, art actlv1tles, and printable activities; and a mentor
2 guided learning mode comprising:
3 a. a software module for a mentor to select one or
4 more learners, wherein said software module is adapted
5 for and accessible by the mentor to the one or more
6 learners;
7 b. a software module for the mentor to select a
8 plurality of learning activities from among a population of
9 activities to create one or more subpopulations of activities
10 to be completed by one or more learners, wherein said
11 software module is adapted for and accessible by the
12 mentor;
13 c. a software module for the mentor to display and
14 organize the one or more subpopulations of learning
15 activities, wherein said software module is adapted for and
16 accessible by the mentor, wherein the organizing
17 comprises optionally sequencing activities, by the mentor,
18 within the one or more subpopulations of activities;
19 d. a software module for the mentor to create, name,
20 and save the one or more subpopulations of learning
21 activities associated with the one or more learners,
22 wherein said software module is adapted for and
23 accessible by the mentor;
24 e. a software module for the mentor to monitor the
25 progress of the one or more learners in completing the one
26 or more subpopulations of activities, wherein the software
27 module is adapted for and accessible by the mentor; and
28 f. a software module for displaying and providing
29 access to the one or more subpopulations of learning
30 activities to be completed by the one or more learners,
31 wherein said software module is adapted for and
32 accessible by the one or more learners;
33 whereby the mentor guided learning mode provides tools for the
34 mentor to design a customized lesson, unit, or level of study and
35 tools for the learners to access the lesson, unit, or level of study
3 6 customized by the mentor.
3
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1 Claim 1 recites an "educational system assembling platform comprising: a
2 digital processing device [ and a computer program] including executable
3 instructions that create a web-based educational environment." Claim 43
4 recites "[ n ]on-transitory computer readable media encoded with a computer
5 program including instructions executable by a digital processing system to
6 create a web-based educational environment." In each case, the educational
7 environment comprises a "mentor guided learning mode" including each of
8 the software modules a.-f. recited in claim 44.
9
10 NON-OBVIOUSNESS
11 Two such software modules are:
12 a software module for the mentor to display and organize
13 the one or more subpopulations of learning activities,
14 wherein said software module is adapted for and
15 accessible by the mentor, wherein the organizing
16 comprises optionally sequencing activities, by the mentor,
17 within the one or more subpopulations of activities; ...
18 [and]
19 a software module for the mentor to create, name, and save
20 the one or more subpopulations of learning activities
21 associated with the one or more learners, wherein said
22 software module is adapted for and accessible by the
23 mentor.
24 LoSasso describes a "system and method [that] facilitate creation,
25 implementation and utilization of computer-based simulations by personnel
26 involved in a wide range of educational, professional and/or business
27 pursuits." (LoSasso, col. 7, 11. 21-29). In particular, LoSasso describes a
28 web-based educational environment including interactive sales
29 representation scenarios, searchable by a learner. (See LoSasso, col. 4, 11.
30 11-13 & col. 7, 11. 7-36). These scenarios may be created by means of "an
4
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1 administrative interface that communicates with a processor and a memory
2 unit." (LoSasso, col. 5, 11. 60-65; see also id., col. 7, 11. 42-53). LoSasso
3 also teaches that "scenario(s) created according to [LoSasso's teachings]
4 may be provided to users on conventional media, e.g., compact disc, floppy
5 disc, or the like, through conventional retail outlets." (LoSasso, col. 4, 11.
6 22-26; see also id., col. 7, 11. 53-58). Although LoSasso describes enabling
7 administrative users to design courses, as well as providing users (that is,
8 learners) "with the ability to search existing scenarios on the system, e.g., by
9 subject matter, product industry, need, customer, segment, and geography"
10 (LoSasso, col. 4, 11. 11-13), LoSasso teaches neither mentor guided learning
11 nor the selection of subpopulations of learning activities (that is, scenarios).
12 Mansfield describes software tools permitting an educator to custom
13 design lesson plans for individual autistic or learning-impaired students (see
14 Mansfield, paras. 14 & 50). In accordance with one described method,
15 Mansfield's software displays a list of student names from the student
16 records 11 maintained in a computerized database; and permits an educator
17 to select a particular student. (See Mansfield para. 50; see also id., paras.
18 42--44). The software also permits the educator to select a domain, that is, a
19 skill set, the student needs to learn. Once the educator has selected a
20 domain, the software displays teaching activities appropriate to the skill set,
21 as well as to the student's skill level and learning preferences. (See
22 Mansfield, paras. 51 & 52; see also id., para. 33 (listing domains into which
23 teaching activities might be organized)). The educator then uses the
24 software to select at least one teaching activity for inclusion into a lesson
25 plan. (See Mansfield, para. 52; see also id., paras. 45 & 46). The lesson
5
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1 plan ultimately is displayed to a teacher for presentation to the student. (See
2 Mansfield, para. 62).
3 Mansfield contemplates designing plural lesson plans in different
4 domains for a student. (See Mansfield, para. 56 ( explaining that the software
5 "allows flexibility between lesson plans and respective exercises (activities)
6 of different domain areas per student.")). In this sense, at least, Mansfield
7 contemplates the selection of subpopulations of the entire population of
8 teaching activities for presentation to a student.
9 That said, the Appellants correctly point out that the Examiner has not
10 shown that either Lo Sasso or Mansfield describes "a software module for the
11 mentor to ... organize the one or more subpopulations of learning
12 activities," as recited in claims 1, 43 and 44. (Italics added for emphasis).
13 ("Appellant's Brief under 37 C.F.R. § 41.37," dated June 12, 2015 ("Appeal
14 Brief' or "App. Br."), at 16 & 17). Even assuming, as the Examiner finds,
15 that Mansfield's software organizes the subpopulation of learning activities
16 for display to the educator (See Ans. 16), the software does not thereby
17 enable the mentor (that is, the educator) to organize the subpopulation.
18 Likewise, the organization of the teaching activities into domains within the
19 described system (see Non-Final Act. 5, citing Mansfield, para. 33) does not
20 imply enabling the educator to organize subpopulations.
21 Glezerman describes a virtual learning and entertainment environment
22 for children in the range of three-years-old to eight-years-old. Means are
23 provided to allow a parent, teacher or guardian to set parameters governing
24 the manner in which the environment responds to a child, so as to encourage
25 the child to engage in desired activities and discourage the child from
26 engaging in undesired activites. (See Glezerman, paras. 5 & 17). The
6
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1 Examiner cites Glezerman for these teachings, as well as the teaching that
2 learning activities suited to a child three-years-old to eight-years-old may
3 include "answer games, puzzles, brain teasers, vocabulary games, passive
4 and adventure game play, and competitive and non-competitive games."
5 (Final Act. 7, citing Glezerman, para. 46). These teachings do not remedy
6 the aforementioned deficiencies in the combined teachings of Lo Sasso and
7 Mansfield. We do not sustain the rejection of claims 1, 5, 8-19, 21-23, 25-
8 34, 36 and 42--44 under§ 103(a) as being unpatentable over LoSasso,
9 Mansfield and Glezerman.
10 Snyder describes a computer network programmed to implement a
11 curriculum divided into a large number of curriculum modules. Each such
12 curriculum module encompasses a relatively small, discrete unit of
13 curricular material. (See generally Snyder, paras. 116-18). The Examiner
14 cites Snyder for the teaching that a system may present to teachers modules
15 with known, predefined durations. (See Final Act. 11 & 12, citing Snyder,
16 paras. 118 & 182). These teachings do not remedy the aforementioned
1 7 deficiencies in the combined teachings of Lo Sasso and Mansfield. We do
18 not sustain the rejection of claims 20 and 24 under§ 103(a) as being
19 unpatentable over LoSasso, Mansfield, Glezerman and Snyder.
20 Woolf describes a computer learning system 100 capable of
21 interacting with teacher administrators (that is, individuals with authority to
22 administer educational services to a population of students) through separate
23 teacher administrator user interfaces 1200 accessible through administrator
24 client devices 140. (See Woolf, paras. 35 & 198; & Figs. 1 & 12). A
25 learning service program 106 receives learning data for a plurality of user
26 (that is, students). The learning service program I 06 reacts to administrator
7
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1 selected parameters entered through a teacher administrator user interface
2 1200 to process the learning data for display to a teacher administrator. (See
3 Woolf, paras. 196 & 198; & Fig. 2).
4
5 INELIGIBLE SUBJECT MATTER
6 The Supreme Court has established a two-step analysis for
7 determining whether the subject matter of a claim is eligible for patent
8 protection. First, one must determine whether the claim is "directed to one
9 of [the] patent-ineligible concepts," such as an abstract idea. Alice Corp. v.
10 CLS Banklnt'l, 134 S.Ct. 2347, 2355 (2014). Second, if so, one must
11 determine if the remainder of the claim recites an "inventive concept," such
12 that the claim as a whole recites a specific application of the patent-
13 ineligible concept. Id. at 2357 & 2358.
14 The Appellants' arguments do not distinguish between the respective
15 language of independent claims 1, 43 and 44; neither do the Appellants
16 appear to argue any dependent claim separately. Claim 44 will be taken as
17 representative. See 37 C.F.R. § 41.37(c)(l)(iv). Even apart from this
18 procedural consideration, it is noted that, although claim 1 recites an
19 "educational system assembling platform comprising: a digital processing
20 device [ and a computer program] including executable instructions that
21 create a web-based educational environment[;]" claim 43 recites "[ n ]on-
22 transitory computer readable media encoded with a computer program
23 including instructions executable by a digital processing system to create a
24 web-based educational environment[;]" and claim 44 recites "[a] method of
25 facilitating the educational development of a learner comprising: providing
26 executable instructions ... to create a web-based educational
8
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Application 12/946,627
1 environment[,]" in each case the educational environment comprises a
2 "mentor guided learning mode" including each of the software modules a.-f.
3 recited in claim 44. In assessing a rejection for ineligible subject matter
4 under § 101, we look not to the name or intended use assigned to the
5 claimed subject matter in the preamble, but to the nature of the claimed
6 subject matter as a whole, to determine whether the claim falls within the
7 "abstract idea" exception. See CyberSource Corp. v. Retail Decisions, Inc.,
8 654 F.3d 1366, 1374 (Fed. Cir. 2011) ("Regardless of what statutory
9 category ('process, machine, manufacture, or composition of matter,' 3 5
10 U.S.C. § 101) a claim's language is crafted to literally invoke, we look to the
11 underlying invention for patent-eligibility purposes"). Therefore, we may
12 treat claims 1, 43 and 44 as interchangeable for purposes of eligibility under
13 § 101.
14 We address the two steps of the test in tum. Only those arguments
15 actually made by the Appellants have been considered. Arguments that the
16 Appellants could have made, but chose not to make, have not been
17 considered and are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In
18 re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
19
20 First Step
21 Claim 44 recites a "method of facilitating the educational
22 development of a learner." The method includes the step of "providing
23 executable instructions to a digital processing device ... to create a web-
24 based educational environment for a learner aged 1 year to 10 years old."
25 The web-based educational environment includes "a software module for
26 displaying and providing access to the one or more subpopulations of
9
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1 learning activities to be completed by the one or more learners, wherein said
2 software module is adapted for and accessible by the one or more learners."
3 The Examiner determines that claim 44 is directed to the abstract idea
4 of "automating methods of teaching[,] formerly recited as [the] idea of
5 monitoring and assisting a learner as [ the learner proceeds] through one or
6 more computer based learning activities." (Ans. 2). According to the
7 Examiner, the idea of monitoring and assisting a learner falls "under the
8 category of method[s] of organizing human activity." (Id.) The Appellants
9 criticize the Examiner for "[ d]efining the idea so narrowly that it simply
10 restates the invention-and expressly incorporating the technical field being
11 improves into the definition." (App. Br. 11).
12 A claim in a patent application, as a description of the scope of an
13 exclusive right sought by an applicant, may be characterized by a spectrum
14 of abstract ideas of greater or lesser generality, each more or less closely
15 corresponding to the precise limitations recited in the claim. Cf Nichols v.
16 Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (recognizing, in
17 the context of copyright infringement of a play, that "[ u Jpon any work ... a
18 great number of patterns of increasing generality will fit equally well, as
19 more and more of the incident is left out."). An unhappy medium is reached,
20 and rejection is justified, when an Examiner articulates an abstract idea so
21 closely aligned with the limitations of the claim that the claim, as a whole,
22 becomes an expression of the idea rather a practical application. So long as
23 the idea articulated by the Examiner is, indeed, abstract, the narrowness of
24 the idea articulated by the Examiner, that is, the closeness with which the
25 idea aligns with the recited limitations, is a virtue.
10
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1 The Examiner has not cited a court decision, or guidance from the
2 Director, stating that "monitoring and assisting a learner as [the learner
3 proceeds] through one or more computer based learning activities" (Ans. 2)
4 is an abstract idea. Given the relatively short period of time that has elapsed
5 since Alice was decided in 2014, neither the courts nor the Director have had
6 the opportunity to fill in, with decisions or guidance, the entire range of what
7 constitutes ineligible abstract ideas. Nevertheless, displaying and providing
8 access to learning activities to be completed by the one or more learners is
9 properly characterized as an abstract idea.
10 In Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266 (Fed.
11 Cir. 2016), our reviewing court addressed the eligibility of a claim for a
12 media system for delivering streaming content from a network-based
13 resource to a handheld wireless electronic device:
14 A media system, comprising:
15 a network based media managing system that maintains a
16 library of content that a given user has a right to access and a
17 customized user interface page for the given user;
18 a collection of instructions stored in a non-transitory
19 storage medium and configured for execution by a processor of
20 a handheld wireless device, the collection of instructions
21 operable when executed: (1) to initiate presentation of a
22 graphical user interface for the network based media managing
23 system; (2) to facilitate a user selection of content included in the
24 library; and (3) to send a request for a streaming delivery of the
25 content; and
26 a network based delivery resource maintaining a list of
27 network locations for at least a portion of the content, the
28 network based delivery resource configured to respond to the
29 request by retrieving the portion from an appropriate network
30 location and streaming a representation of the portion to the
31 handheld wireless device.
11
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1 (Id. at 1267 & 1268). Our reviewing court held that this claim was directed
2 to the abstract idea of "delivering user-selected media content to portable
3 devices." (Id. at 1269). Although claim 44 recites a module for delivering a
4 specific type of media content, namely, learning activities, rather than
5 content in general, the distinction lies in the manner in which the content is
6 perceived and understood by the learner. The recitation of "a software
7 module for displaying and providing access to the one or more
8 subpopulations of learning activities to be completed by the one or more
9 learners, wherein said software module is adapted for and accessible by the
10 one or more learners" is an expression of an abstract idea.
11 The concept of monitoring and assisting the learner as the learner
12 proceeds through learning activities is equally abstract. In Vehicle
13 Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, 635 Fed. Appx. 914
14 (Fed. Cir. 2015), our reviewing court addressed a claim for monitoring an
15 equipment operator for intoxication, physical impairment, medical
16 impairment or emotional impairment; and intervening as necessary:
17
18
19
20
21
22
23
24
25
26
27
28
29
30
8. A method to screen an equipment operator for impairment,
compnsmg:
screening an equipment operator by one or more expert
systems to detect potential impairment of said equipment
operator;
selectively testing said equipment operator when said
screening of said equipment operator detects potential
impairment of said equipment operator; and
controlling operation of said equipment if said selective
testing of said equipment operator indicates said
impairment of said equipment operator, wherein said
screening of said equipment operator includes a time-
sharing allocation of at least one processor executing at
least one expert system.
12
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1 (Id. at 916). Our reviewing court held that this claim was directed to the
2 abstract idea of "testing operators of any kind of moving equipment for any
3 kind of physical or mental impairment." (Id. at 917). As support for its
4 determination that the claim was directed to an abstract idea, the court
5 observed that:
6 None of the claims at issue are limited to a particular kind of
7 impairment, explain how to perform either screening or testing
8 for any impairment, specify how to program the "expert system"
9 to perform any screening or testing, or explain the nature of
10 control to be exercised on the vehicle in response to the test
11 results.
12 (Id.)
13 Appealed claim 44 recites "a software module for the mentor to
14 monitor the progress of the one or more learners in completing the one or
15 more subpopulations of activities, wherein the software module is adapted
16 for and accessible by the mentor." As was the case in Vehicle Intelligence,
1 7 permitting a mentor to monitor learners as those learners interact with
18 learning activities is an abstract idea. The analogy is a loose one-nothing
19 in the Specification suggests monitoring students specifically for
20 intoxication, physical impairment, medical impairment or emotional
21 impairment. Nevertheless, the analogy is sufficiently close to imply that
22 monitoring the behavior and performance of others is an abstract idea.
23 Indeed, appealed claim 44 is more abstract, and less specific, than the
24 claim at issue in Vehicle Intelligence. In Vehicle Intelligence, the equipment
25 operator was monitored while operating presumable physical equipment,
26 whereas the mentor recited in claim 44 monitors the learners receipt and
27 interaction with media content, that is, with learning activities. Furthermore,
28 the claim at issue in Vehicle Intelligence recited monitoring of the equipment
13
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1 operator by means of expert systems, whereas appealed claim 44 does not
2 recite how the learner is to be monitored. The claim at issue in Vehicle
3 Intelligence positively recited intervention in the form of controlling the
4 equipment in the event of operator impairment, whereas appealed claim 44
5 merely leaves open the possibility that the mentor might assist the learner.
6 Therefore, the Examiner correctly characterizes "monitoring and assisting a
7 learner as [ the learner proceeds] through one or more computer based
8 learning activities" as an abstract idea.
9 The Appellants argue that their claims are not directed to an abstract
10 idea because of a "total lack of potential for the claims to 'tie up' and
11 preempt every application of monitoring and assisting a learner as they
12 proceed through one or more computer based learning activities." (App. Br.
13 12; see also "Appellants' Reply Brief," dated Feb. 10, 2016 ("Reply Br."), at
14 5). "[T]he prohibition against patenting abstract ideas 'cannot be
15 circumvented by attempting to limit the use of [ an idea] to a particular
16 technological environment."' Bilski v. Kappas, 561 U.S. 593, 610 & 611
17 (2009) (quoting Diamond v. Diehr, 450 U.S. 175, 191 & 192 (1981)); see
18 also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 & 1363
19 (Fed. Cir. 2015) ("And that the claims do not preempt all price optimization
20 or may be limited to price optimization in the e-commerce setting do not
21 make them any less abstract."). Claim 44 preempts the abstract idea of
22 "monitoring and assisting a learner as [ the learner proceeds] through one or
23 more computer based learning activities" (Ans. 2), at least in the field of
24 creating a web-based educational environments for learners aged 1 year to
25 10 years old. On this basis alone, claim 44 is directed to the articulated
26 abstract idea.
14
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1 The Appellants also seek to analogize this case to DDR Holdings,
2 LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings,
3 the claims at issue related to methods for displaying to a website visitor
4 seeking product information from a merchant a composite web page
5 presenting both the product information from the merchant and the "look
6 and feel" of the host website. See id. at 1250. Our reviewing court
7 determined that the claims at issue in DDR Holdings were not directed to an
8 abstract idea because the claimed subject matter addresses "a challenge
9 particular to the Internet." Id. at 1257. The court went so far as to declare
10 that "the claimed solution [was] necessarily rooted in computer technology
11 in order to overcome a problem specifically arising in the realm of computer
12 networks." Id.
13 The claims at issue in DDR Holdings were not analogous to claim 44.
14 Claim 44 does not address a problem specific to computer technologies or
15 computer networks. Instead, the claims recite configuring modules to assist
16 mentors in pursuing an activity, namely, the design of customized
17 educational content. (See Ans. 13). The Appellants' Specification does not
18 allege that the Appellants invented this activity; instead, the Specification
19 merely asserts that "[ e ]xisting educational systems [ do not] provide powerful
20 tools to facilitate the involvement mentors in the design of customized
21 educational content." (Spec. para. 23). This statement supports the
22 Examiner's determination that claim 44 is directed to "automating methods
23 of teaching" (Ans. 2) and not to solving a problem or problems unique to
24 computer systems or networks. The Appellants have not identified any steps
25 recited in claim 44 beyond those which a mentor might routinely and
26 consciously perform, even without the claimed system, when planning a
15
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1 lesson for a learner of the recited age range. See SmartGene, Inc. v.
2 Advanced Bio. Labs., SA, 555 Fed. Appx. 950, 955 (Fed. Cir. 2014) (holding
3 that the claim at issue in that case was directed to an abstract idea because
4 the claim did not recite an improvement to computer technology; and
5 because the claim did not "purport to identify any steps beyond those which
6 doctors routinely and consciously perform" when prescribing a treatment
7 regimen). The Examiner correctly characterizes claim 44 as directed to the
8 abstract idea of "monitoring and assisting a learner as [ the learner proceeds]
9 through one or more computer based learning activities." (Ans. 2).
10
11 Second Step
12 It remains to address the second step of the analysis. The Appellants
13 argue that the subject matter of claim 44 is eligible for patent protection
14 because the subject matter represents an improvement to a technical field,
15 namely, creating web-based educational environments. (See App. Br. 13).
16 As discussed earlier, however, web-based educational environments are
1 7 themselves abstract ideas. In this instance, at least, the web-based
18 educational environment is an undifferentiated means for arranging and
19 delivering a particular type of media content, namely, learning activities.
20 See Affinity Labs of Tex. at 1269 (holding that "delivering user-selected
21 media content to portable devices" was an abstract idea). Because the
22 creation of web-based educational environments is not a technical field for
23 purposes of a patent eligibility analysis, the Appellants' argument is not
24 persuasive.
25 The Appellants argue that the subject matter of claim 44 is eligible for
26 patent protection because the claimed method includes "specific limitations
16
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1 other than what is well-understood, routine and conventional in the field."
2 (App. Br. 14 (quoting 2014 Interim Guidance on Patent Subject Matter
3 Eligibility, 79 Fed. Reg. 74618, 74624 (Dec. 16, 2014)). More specifically,
4 on page 15 of the Appeal Brief, the Appellants argue that the various
5 modules recited as necessary components of "a mentor guided learning
6 mode" within the web-based educational environment created in accordance
7 with the executable instructions provided to the digital processing device in
8 the course of performing the recited method 2 are designed to facilitate the
9 mentor's performance of unconventional steps in designing a customized,
10 lesson, unit or level of study.
11 One of the modules recited in claim 44 is "for a mentor to select one
12 or more learners." Another recited module is "for the mentor to select a
13 plurality of learning activities from among a population of activities to create
14 one or more subpopulations of activities to be completed by one or more
15 learners." Yet another such module is "for the mentor to create, name, and
16 save the one or more subpopulations of learning activities associated with
1 7 the one or more learners." Claim 44 does not further limit the manner in
18 which the one or more learners, or the plurality of learning activities, are to
2 On page 15 of the Appeal Brief, the Appellants argue that the subject
matter of claim 44 "add[ s] unconventional steps that confine the claim to a
particular useful application." (Emphasis omitted). The only actual step in
the claimed method is "providing executable instructions to a digital
processing device ... to create a web-based educational environment for a
learner aged 1 year to 10 years old." The remainder of the claim
encompasses "a mentor guided learning mode" within the web-based
educational environment created according to the executable instructions.
Providing executable instructions to a digital processing device is well-
known, routine and conventional (see Ans. 4 ); and, as discussed earlier,
creating web-based educational environments is not a technical field.
17
Appeal 2016-003423
Application 12/946,627
1 be selected; or in which subpopulations of learning activities are to be
2 created, named or saved. Instead, the claim merely "assumes the availability
3 of physical components for input, memory, look-up, comparison, and
4 output." SmartGene, Inc., 555 Fed. Appx. at 955. (See also Ans. 4 ("use of
5 a processing device, memory, computer network, [ operating system] and
6 executable code to run computer software to perform functions and interface
7 with a user is well known .... Creating computer files, naming files or
8 tagging with metadata and storing files for later retrieval are well-known
9 computer operations that do not fundamentally alter ... the technology.")).
10 Claim 44 also recites a module "for the mentor to display and
11 organize the one or more subpopulations of learning activities, ... wherein
12 the organizing comprises optionally sequencing activities, by the mentor,
13 within the one or more subpopulations of activities." Displaying
14 information was a well-known, routine and conventional use of a digital
15 processing device. Cf In re Abele, 684 F .2d 902 (CCP A 1982) (holding that
16 claim 5, which recited a "method of displaying data in a field comprising:
1 7 ... displaying the value of said difference [between a local data value and an
18 average data value] as a signed gray scale at a point in a picture which
19 corresponds to said data point," id. at 908, "present[ ed] no more than the
20 calculation of a number and display of the result," id. at 909, and so was
21 ineligible for patent protection). To the extent that the digital processing
22 device might participate in the organizing (that is, the sequencing) of the
23 subpopulation of learning activities, sorting algorithms also were well-
24 known, routine and conventional. (See generally D.E. Knuth, 3 THE ART OF
25 COMPUTER PROGRAMMING ("Knuth") 1-5 (2d edition, Addison-Wesley
26 1998)).
18
Appeal 2016-003423
Application 12/946,627
1 Therefore, the Examiner correctly determines that representative
2 claim 44 is directed to an abstract idea, namely, "monitoring and assisting a
3 learner as [ the learner proceeds] through one or more computer based
4 learning activities." (Ans. 2). The Examiner also correctly determines that
5 claim 44, as a whole, fails to recite a specific application of the abstract idea.
6
7 DECISION
8 We sustain the rejection of claims 1, 5 and 8--44 under 35 U.S.C.
9 § 101 as being directed to ineligible subject matter.
10 We do not sustain the rejections of claims 1, 5, 8-19, 21-23, 25-34,
11 36 and 42--44 under§ 103(a) as being unpatentable over LoSasso, Mansfield
12 and Glezerman; of claims 20 and 24 under§ 103(a) as being unpatentable
13 over LoSasso, Mansfield, Glezerman and Snyder; or of claims 35 and 37--41
14 under§ 103(a) as being unpatentable over LoSasso, Mansfield, Glezerman
15 and Woolf.
16 Therefore, we AFFIRM the Examiner's decision rejecting claims 1, 5
17 and 8--44.
18 No time period for taking any subsequent action in connection with
19 this appeal maybe extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
20 § 1.136(a)(l )(iv).
21
22 AFFIRMED
19