Ex Parte Fife et al

Patent Trial and Appeal Board

Mar 8, 2018

12348753 (P.T.A.B. Mar. 8, 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.
12/348,753 01/05/2009 James H. Fife 011948-0142-999 3699
759020583
Jones Day
250 Vesey Street
New York, NY 10281-1047
03/09/2018 EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
03/09/2018 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 JAMES H. FIFE and JEFFREY M. BOLDEN
Appeal 2017-000980
Application 12/348,753
Technology Center 3700
Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1,2, 5—13, and 17—33. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 “The real party in interest is Educational Testing Service of Princeton, New
Jersey.” (Appeal Br. 1.)
Appeal 2017-000980
Application 12/348,753
STATEMENT OF THE CASE
According to the Appellants, “[t]he invention relates generally to
methods for written response evaluation.” (Spec. 1.)
Illustrative Claim
1. A computer-implemented method of generating a real
number score for a response comprising:
accessing, using a processing system, a computer scoring
model including a concept and one or more model sentences
corresponding to the concept;
processing a response using part-of-speech tagging and
parsing to provide a phrasal structure that is representative of
the response;
applying a probabilistic computer model to the phrasal
structure to determine a probability that the one or more model
sentences are present in the response;
applying the computer scoring model with the processing
system to determine a concept probability based on the
probability that the one or more model sentences are present in
the response, said concept probability being a probability that
the concept is present in the response;
applying, using the processing system, a scoring rule
function, said scoring rule function being configured to
generate an integer number score for the response based on the
concept probability;
determining, using the processing system, an expected
value function for the scoring rule function; and
using the expected value function to generate the real
number score for the response with the processing system, said
real number score corresponding to the integer number score.
Rejection
The Examiner rejects claims 1, 2, 5—13, and 17—33 under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more.
(Final Action 2.)
2
Appeal 2017-000980
Application 12/348,753
ANALYSIS
According to the Appellants, their invention concerns “a method of
generating a real number score for a response, such as a written essay
response,” “a method of determining whether a concept is present in an
essay,” and/or “a method of validating an automated real number scoring
system or model.” (Spec. 3—5.) Apparently, the “conventional” approach to
“automated essay scoring” makes “binary determinations” when calculating
a score for an written response essay (Appeal Br. 12) and existing scoring
models “return only an affirmative response or a negative response
depending on whether a model sentence is present” (Spec. 11). In the
Appellants’ “alternate approach” to automated essay scoring, the calculation
of the score is instead “based on the probabilities themselves.” (Id.)
The Examiner determines that the claims on appeal are “directed to an
abstract idea” and that the additional elements in the claims “are not
sufficient to amount to significantly more” than this abstract idea. (Final
Action 2, 3.) More succinctly, the Examiner concludes that the claims on
appeal do not survive the two-step Alice test.2 We have carefully considered
the Appellants’ position regarding the incorrectness of this conclusion (see
Appeal Br. 7—17), but we are not swayed thereby. We are not swayed
because, as discussed below, when we apply the two-step Alice test to the
2 The Alice test entails two steps for distinguishing between an “abstract
idea[]” and a “patent-eligible application[]” of an abstract idea. Alice Corp.
Pty. Ltd. v. CLS Banklnt’l, 134 S. Ct. 2347, 2355 (2014). The first step of the
Alice test is to determine whether the claims at issue are “directed to” an
abstract idea. Id. If so, the inquiry proceeds to the second step of the Alice
test where the elements of the claims are considered “individually and ‘as an
ordered combination’” to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
3
Appeal 2017-000980
Application 12/348,753
claims on appeal, we reach the same conclusion as the Examiner, namely
that the claims do not pass muster under § 101.
As for the first step of the Alice test, we generally agree with the
Examiner that the claims on appeal are directed to steps that “can be used in
order to provide scores on a written work.” (Answer 4.)3 The Appellants
likewise acknowledge that “[t]he claims provide a method and system of
generating real number scores using probabilities associated with the
possible presence of elements in a response.” (AppealBr.il.) In other
words, the claims are directed to mathematically analyzing data to compute
a numerical value. And analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, fall under the
information-based category of abstract ideas.4
3 The Appellants assert in the Appeal Brief that the Examiner inaccurately
characterizes the claims as being directed to the organization of human
activity. (See Appeal Br. 9—11.) However, the Appellants do not file a
Reply Brief challenging the Examiner’s later characterization of the claimed
subject matter as falling within the information-based category of abstract
ideas. (See Answer 4.) We nonetheless note that the claim limitations
particularly pointed out by the Appellants as undermining abstractness (see
Appeal Br. 10) pertain only to details about the information being analyzed
and/or the mathematics involved in doing so.
4 See, e.g., TLI Commc ’ns LLCPatent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016); TLI Commc ’ns, 823 F.3d at 613; Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); SmartGene,
Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, 955 (Fed. Cir.
2014); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRF Tech., Inc. v.
Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Parker
v. Flook, 437 U.S. 584, 589—90 (1978); Gottschalkv. Benson, 409 U.S. 63,
67 (1972).
4
Appeal 2017-000980
Application 12/348,753
As for the second step of the Alice test, we agree with the Examiner
that the “additional elements” in the claims (i.e., claim limitations not
pertaining to details about the data being analyzed and/or the mathematics
involved in doing so) entail only conventional computer components (e.g.,
“a processor or a processing system”). (Answer 5.) And we agree with the
Examiner that the recited computer components individually equate to a
“computational tool in order to produce the real number score,” and that
viewing them “as an ordered combination adds nothing to the analysis.”
(Id.) The claims on appeal, when construed in light of the Specification,
require only off-the-shelf conventional computer technology to assist in the
crunching of data into the end-game numerical value, namely a real number
score for a written essay response.5
The Appellants assert in the Appeal Brief that there has been a failure
to “recognize numerous of the ‘additional elements’ recited in the claims,”
and lists claim language reciting the processing, applying, determining,
calculating, and comparing of data. (See Appeal Br. 16.) However, the
listed claim limitations only enumerate details of the information being
analyzed and/or the mathematics involved in doing so. This is not enough to
differentiate the Appellants’ claimed methods from ordinary mental
processes, whose implicit exclusion from § 101 undergirds the information-
based category of abstract ideas.
5 The Specification conveys the “methods and manners may be implemented
as a computer or computer system” (Spec. 23), but the ensuing descriptions of
the components of this computer system (e.g. a processor 502, a memory 504,
etc.) are cursory at best (see id., at 23—24). Also, the illustrated “architecture”
shows the computer components arranged in a standard ordered combination
(see id., at 23, Fig. 5).
5
Appeal 2017-000980
Application 12/348,753
The Appellants also contend that the claims on appeal are rooted in
computer technology. (See Appeal Br. 11—14.) This contention is premised
upon the Appellants’ assertion that the claimed methods “use[] probabilities
associated with the possible presence of elements in a response and
determines a real number score based on the probabilities.” (Id. at 12.)
However, this assertion epitomizes why the claimed subject matter is, at
best, an improved approach to mathematical scoring practices, not computer
technology. We agree with the Examiner that, here, “the computer is being
used as a tool to automate a repetitive procedure in order to generate a real
number score for a particular essay or other written works.” (Answer 7—8.)
Insofar as a computer allows such a score generation to be done more
quickly or more accurately, such facilitation is not enough to render the
claimed subject matter patent eligible.6
Thus, we sustain the Examiner’s rejection of claims 1, 2, 5—13,
and 17—33 under 35 U.S.C. § 101.
DECISION
We AFFIRM Examiner’s rejection of claims 1,2, 5—13, and 17—33
under 35 U.S.C. § 101.
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
6 See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) (“[Rjelying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible”).
6