Ex Parte Gandhe et al

Patent Trial and Appeal Board

Aug 27, 2018

13900918 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/900,918 05/23/2013 Ankur Gandhe
52021 7590 08/29/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
IN920120033US2_8150-0386 7235
EXAMINER
GEBREMICHAEL, BRUK A
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANKUR GANDHE, RASHMI GANGADHARAIAH,
ANANTHAKRISHNAN RAMANATHAN, and
KARTHIK VISWESWARIAH
Appeal2017-007523
Application 13/900,918
Technology Center 3700
Before LYNNE H. BROWNE, JEFFREY A. STEPHENS, and
BRENT M. DOUGAL, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1-12, 27, and
28, which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b ).
1 This appeal is related to Appeal No. 2017-001859.
2 The real party in interest is identified as IBM Corporation. Appeal Br. 1.
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Application 13/900,918
For the reasons explained below, we do not find error in the
rejections. Accordingly, we AFFIRM.
Claimed Subject Matter
Claims 1 and 5 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A method, comprising:
calculating a vocabulary level for a user in a first language;
comparing, using a processor, difficulty levels of words
within a document in the first language to the vocabulary level
of the user in the first language; and
selecting each word of the document having a difficulty
level that exceeds the vocabulary level of the user in the first
language.
Re} ections3
I. Claims 1-12, 27, and 28 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 2-7.
II. Claims 1, 3-5, 7, 8, and 12 stand rejected under pre-AIA 3 5
U.S.C. § I03(a) as unpatentable over Chang (US 2003/0130836 Al,
published July 10, 2003). Final Act. 9-15.
III. Claims 2 and 6 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Chang and Cha (US 2012/0179455 Al, July
12, 2012). Final Act. 15.
IV. Claims 9, 10, 27, and 28 stand rejected under pre-AIA 35
U.S.C. § I03(a) as unpatentable over Chang and Peters (US 2005/0084829
Al, published Apr. 21, 2005). Final Act. 16--17.
3 In the Answer, the Examiner withdraws a rejection under pre-AIA
35 U.S.C. § 112, second paragraph. Ans. 2; see Final Act. 8.
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V. Claim 11 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Chang and Baker (US 2005/0255431 Al, Published Nov.
17,2005). FinalAct. 18-19.
VI. Claims 1-12, 27, and 28 stand provisionally rejected on the
ground of nonstatutory obviousness-type double patenting over claims 13-
30 of copending Application No. 13/484,910.
DISCUSSION
Rejection I
Appellants argue the rejection of claims 1-12, 27, and 28 under 35
U.S.C. § 101 based on claim 1. Appeal Br. 8. We select claim 1 as
representative. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Appellants argue the Examiner does not identify the abstract idea to
which claim 1 is directed, other than to state that the claim is directed to the
abstract idea of an "idea of itself." Appeal Br. 10. Appellants contend "an
idea 'of itself would appear to run afoul of Step 1 [ of the eligibility test as
described in the Office's 2014 Interim Guidelines on Patent Subject Matter
Eligibility, 79 Fed. Reg. 74618 (2014) (hereinafter the "2014 Interim
Guidelines")] since an idea of itself is not a process, machine, manufacture
or composition of matter." Appeal Br. 10. As Appellants' argument goes,
"[s]ince ... the claims are directed to a machine, manufacture and/or
improvement thereof, the claims are not directed to an idea of itself." Id.
Appellants argue the limitations of claim 1 "involve actions performed,
using a computer, on a computer data structure." Id. at 11. Because the
claim refers to "operations - not ideas," argue Appellants, "the Examiner's
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characterization of the limitations themselves as being abstract ideas is
misplaced." Id.
We agree with the Examiner that Appellants misunderstand the
eligibility analysis in arguing that a claim that recites a statutory category
cannot be directed to an idea of itself falling within the abstract idea
exception. Ans. 20. At step one of the framework set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)
and Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), "we
determine whether the claims at issue are directed to" one of the patent-
ineligble concepts, i.e., laws of nature, natural phenomena, and abstract
ideas. Alice, 134 S. Ct. at 2355 (emphasis added). "[T]he 'directed to'
inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
excluded subject matter."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); citing Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016) (inquiring into "the
focus of the claimed advance over the prior art")). "If so, we then ask,
'[w]hat else is there in the claims before us?"' Alice, 134 S. Ct. at 2355.
"To answer that question, we consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 78-79). Thus, on its face, the
Mayo/Alice framework explicitly recognizes there may be additional
elements beyond an abstract idea that is the focus of the claim. The
Examiner's reference to an "idea of itself," a term used in the Office's July
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2015 Update to the 2014 Interim Guidelines, identifies the focus of the claim
and does not indicate the Examiner is ignoring other limitations within the
claim.
The Examiner determines that claim 1 is directed to the abstract idea
of making a calculation, comparison, and selection involving a user's
vocabulary level and words within a document. Final Act. 3--4. The
Examiner determines the claim "does not specify any technique or
implementation regarding how the processor performs the calculating
procedure in order to achieve the vocabulary level for the user in the first
language," and "does not specify how the difficulty levels of the words in
the document are achieved." Id. We agree, and Appellants do not
meaningfully challenge these determinations.
Appellants argue that because the Supreme Court in Alice declined to
limit the precise contours of the abstract ideas category, the Court "did not
endorse the type of major expansion of what constitutes an 'abstract idea'
advocated for by the Examiner." Appeal Br. 11-12. Appellants suggest
abstract ideas include only "fundamental economic practice[ s ]" such as
those at issue in Alice and Bilski. 4 Id. at 12.
The Alice Court's observation that it was not necessary to "labor to
delimit the precise contours of the 'abstract ideas' category in this case" was
based on the lack of distinction between the abstract idea at issue in Alice as
compared to that of Bilski, and implies that other cases may involve other
types of abstract ideas. Alice, 134 S. Ct. at 2357. Appellants do not point to
any precedent indicating abstract ideas are limited to fundamental economic
practices, and many of the Federal Circuit's subject matter eligibility cases
4 Bilski v. Kappas, 561 U.S. 293 (2010).
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have involved abstract ideas that are not so characterized. As just one
example, the Federal Circuit determined in Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), that claims including
limitations such as collecting (including via "data streams"), analyzing, and
displaying information in a particular field were directed to an abstract idea.
The Court explained:
Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available
information in a particular field, stating those functions in
general terms, without limiting them to technical means for
performing the functions that are arguably an advance over
conventional computer and network technology.
Id. at 1351.
Similarly, here, as discussed above, the claims do not recite technical
means for performing the functions recited in the claims. The Examiner also
determines the claims do not purport to improve the functioning of the
computer itself, and finds the claimed process can be performed by a human
using a pen and paper. Id. at 21-22, 25.
Appellants respond that "the alleged fact that certain steps could be
performed by a human is not dispositive" because "[t]he invention, as
explicitly claimed, is computer-implemented." Reply Br. 2. "Courts have
examined claims that required the use of a computer," however, "and still
found that the underlying, patent-ineligible invention could be performed via
pen and paper or in a person's mind." Versata Dev. Group v. SAP Am.,
Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015).
Appellants also contend it is not a requirement to improve the
functioning of the computer itself. Reply Br. 3. The Examiner's
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determination that the steps performed by the processor in claim 1 do not
improve the functioning of the computer itself, however, distinguishes claim
1 in this case from claims such as those at issue in Enfzsh. In Enfzsh, the
Federal Circuit considered "whether the focus of the claims is on the specific
asserted improvement in computer capabilities (i.e., the self-referential table
for a computer database) or, instead, on a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool." 822 F.3d
at 1335-36. Unlike the claims in Enfzsh, there is no indication that the
"processor" recited in claim 1 is invoked as anything other than a tool to
perform a task that could otherwise be performed by a human using pen and
paper.
For the foregoing reasons, Appellants have not informed us of error in
the Examiner's determination that claim 1 is directed to an abstract idea.
We next consider Appellants' arguments regarding the second step of the
Mayo/Alice framework, namely whether additional elements within the
claims add significantly more to the abstract idea. See Appeal Br. 12-13.
Appellants contend "the Examiner does not identify, in the rejection,
the additional elements," or "explain[] why the additional elements do not
add significantly more to the alleged exception." Appeal Br. 13. Appellants
argue the Examiner's determination on this point is conclusory. Id.
Without more, Appellants' arguments do not inform us of error in the
Examiner's rejection. In describing the abstract idea to which claim 1 is
directed, the Examiner determines it is implemented on a generic computer
element that performs generic computer functions. Final Act. 3-5. The
Examiner is specifically referring to the "processor" recited in claim 1. Id.
at 4. We agree that merely reciting a processor to perform what we have
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identified as the abstract idea does not add significantly more to the abstract
idea in this case. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1097 (Fed. Cir. 2016) ("[W]hile the patent may in fact require that the
claimed data relate to transactions or activities that are executed in the
computer environment, limiting the claims to the computer field does not
alone transform them into a patent-eligible application." (internal quotation
omitted)); Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (US.),
687 F.3d 1266, 1279 (Fed. Cir. 2012) ("Using a computer to accelerate an
ineligible mental process does not make that process patent-eligible.").
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of representative
claim 1 under 35 U.S.C. § 101 as directed to patent-ineligble subject matter.
Thus, we sustain the rejection of claim 1, and, for the same reasons, the
rejection of claims 2-12, 27, and 28, which are not argued separately.
Rejection II
Claims 1, 5, and 12
Appellants argue the rejection of claims 1, 5, and 12 under§ 103(a)
based on claim 1. Appeal Br. 15. We select claim 1 as representative. 37
C.F.R. § 4I.37(c )(1 )(iv).
Appellants argue Chang's paragraphs 26 and 30 cited by the Examiner
do not suggest "selecting each word of the document having a difficulty
level that exceeds the vocabulary level of the user in the first language," as
recited in claim 1. Appeal Br. 16. Appellants acknowledge Chang teaches
displaying the words and phrases unfamiliar to the user, and the meaning of
the text-source data, but argue "this does not necessarily (i.e., inherently
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correspond) to the claimed invention." Id. at 17. "For example," argue
Appellants, "certain words that are unfamiliar to the user may be below the
'user's vocabulary knowledge level' whereas the user may understand some
words that are above the 'user's vocabulary knowledge level."' Id.
We are not persuaded by Appellants' argued distinction between
words that are "unfamiliar" as taught in Chang's paragraph 26 and words
"having a difficulty level that exceeds the vocabulary level of the user in the
first language," as recited in claim 1. Paragraph 23 of Chang teaches that
"the vocabularies that are not under the user's vocabulary knowledge level
are displayed." See Ans. 27. In paragraphs 25 and 26 of Chang, such words
are described as "unfamiliar" to the user. Chang thus equates familiarity
with the vocabulary level of the user. Appellants recognize this connection,
but do not persuasively explain why both passages of Chang do not,
therefore, teach selecting words having a difficulty level that exceeds the
vocabulary level of the user. See Reply Br. 8. We determine that a
preponderance of the evidence supports the Examiner's finding that Chang's
display of unfamiliar words meets the claimed limitation of selecting each
word "having a difficulty level that exceeds the vocabulary level that
exceeds the vocabulary level that exceeds the vocabulary level of the user."
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of representative
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Chang. Thus, we
sustain the rejection of claim 1, and, for the same reasons, the rejection of
claims 5 and 12, which were rejected on the same ground and not argued
separately by Appellants.
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Claims 3 and 7
Appellants argue claim 7 stands or falls with claim 3. Appeal Br. 15.
We select claim 3 as representative of this sub-group of claims for purposes
of the rejection under§ 103(a). 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 3 depends from claim 1, and recites "displaying a paraphrased
version of a selected word, wherein the paraphrased version is in the first
language and has a difficulty level not exceeding the vocabulary level of the
user." Appellants argue Chang's teaching of displaying the meanings
"makes no mention as to the vocabulary level of those meanings." Appeal
Br. 22. Accordingly, Appellants contend, "[a]ny assertion that Chang
suggests that the meanings have 'a difficulty level not exceeding the
vocabulary level of the user/first user' can only be impermissible based upon
speculation-not fact." Id. at 22-23.
Appellants' argument fails to acknowledge what one of ordinary skill
in the art would understand from Chang's teaching that words above the
user's vocabulary knowledge level and "the meaning of the text-source data"
are displayed. Chang paras. 23, 25-26. Chang's purpose is to evaluate the
user's vocabulary knowledge level and "provide[] a plurality of words and
phrases that are suitable for an user automatically according to the words or
vocabularies entered by the user in a bilingual operating system." Chang
Abstract ( emphasis added). Chang similarly describes providing a plurality
of words and phrases "that match[ a] user's level automatically." Id., para.
1. In view of these purposes, it would not make sense to display the
meaning of the text using words with a difficulty level exceeding the
vocabulary level of the user. This is particularly true where Chang
specifically teaches evaluating the user's vocabulary level, displaying words
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of a text source that are not under the user's vocabulary knowledge level,
and displaying the meaning of the text source. Chang paras. 23, 25-26. One
of ordinary skill in the art would understand from the context of Chang that
the "meaning" referred to in, for example, paragraph 26, implicitly refers to
a meaning with a difficulty level not exceeding the vocabulary level of the
user.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of representative
claim 3 under 35 U.S.C. § 103(a) as unpatentable over Chang. Thus, we
sustain the rejection of claim 3, and, for the same reasons, the rejection of
claim 7, which was rejected on the same ground and not argued separately
by Appellants.
Claims 4 and 8
Appellants argue claim 8 stands or falls with claim 4. Appeal Br. 15.
We select claim 4 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 4 depends from claim 1 and recites that the user has a
vocabulary level for a second and different language, and that the processor
is configured to perform the operation of "displaying a paraphrased version
of a selected word, wherein the paraphrased version is in the second
language and has a difficulty level in the second language not exceeding the
vocabulary level of the user in the second language." Appellants argue that
"[ w ]hile the Examiner finds that Chang allegedly teaches storing vocabulary
levels for different languages, claim 4 recites substantially more than
vocabulary levels for different languages." Appeal Br. 23. In particular,
Appellants contend:
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[T]he Examiner has made no findings regarding the claimed: (i) a
paraphrased version of a selected word, (ii) the paraphrased
version is in the second language, (iii) the paraphrased version
and has a difficulty level in the second language not exceeding
the vocabulary level of the user in the second language.
Id. at 24.
The Examiner determines that "a selected word" as recited in claim 4
is not necessarily referring to any of the words of the document recited
according to claim 1 because the claim does not refer to words of the
document. Ans. 42. The Examiner also finds Chang performs its process
with respect to various text sources in different languages and evaluates the
vocabulary level of the user in each of these languages. Ans. 42--43. Under
the Examiner's construction, performance of Chang's method in a second
and different language would result in displaying the meaning of a selected
word in the second language at a level not exceeding the vocabulary level of
the user in the second language, for the reasons discussed above for claims 1
and 3.
Appellants do not persuasively challenge the Examiner's claim
construction or findings regarding Chang, and argue in the Reply that
"Chang ... is completely silent as to the vocabulary level of the 'meaning of
the text-source data."' Reply Br. 13. For the reasons discussed above with
regard to claim 3, this argument does not inform us of error in the rejection
of claim 4.
Thus, we sustain the rejection under 35 U.S.C. § 103(a) of
representative claim 4, and, for the same reasons, the rejection of claim 8,
which was rejected on the same ground and not argued separately by
Appellants.
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Rejection III
Appellants argue the rejection of claims 2 and 6 is in error for the
same reasons argued in support of claims 1 and 5. Appeal Br. 24. For the
same reasons that we sustain the rejection of claims 1 and 5, we sustain the
rejection of claims 2 and 6 under 35 U.S.C. § 103(a).
Rejection IV
Claims 9 and 10
Appellants argue the rejection of claims 9 and 10 is in error for the
same reasons argued in support of claim 5. Appeal Br. 25. For the same
reasons that we sustain the rejection of claim 5, we sustain the rejection of
claims 9 and 10 under 35 U.S.C. § 103(a).
Claims 27 and 28
Appellants argue claim 28 stands or falls with claim 27. Appeal Br.
25. We select claim 27 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 2 7 depends from claim 1 and recites that "the vocabulary level
for the user is based upon a combination of a writing vocabulary level, a
reading level, and a global vocabulary level." Appellants argue the
Examiner has not expressly construed "global vocabulary level" or explicitly
identified teachings within Chang corresponding to the claimed global
vocabulary level. Appeal Br. 26. "Assuming arguendo" that the textbooks,
reference books, and test materials described in paragraph 29 of Chang, cited
by the Examiner, "have some 'global' aspect to them," Appellants contend
"these are not put into a 'combination' of levels so as to create a vocabulary
level for a user." Id. "Instead," Appellants argue, "this information is used
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to generate the definitions ( or classifications) of the vocabulary levels
themselves." Id. (footnote omitted).
The Examiner finds Chang teaches evaluating the vocabulary level of
the user based on a global vocabulary level because Chang's
system evaluates the vocabulary level of the user based on the
vocabulary levels of the words in a given text-source data or
article, wherein the vocabulary levels of the words in the article
are calculated based on a classification scheme that classifies
vocabulary levels of the words based on textbooks, reference
books, TOPEL, GRE, etc.
Final Act. 17 ( emphasis omitted) ( citing Chang paras. 24, 28-29). Thus, the
Examiner identifies Chang's materials that define a global vocabulary level,
and explains how the vocabulary level of the user is determined based on
those materials. Accordingly, Appellants' arguments regarding Chang do
not inform us of error in the rejection of claim 27.
As to the "combination" of vocabulary levels, the Examiner finds
Peters teaches a language learning system that evaluates words in the
student's writing history and reading history. Final Act. 17 ( citing Peters
paras. 56-58, 67. Fig. 15A). The Examiner finds one of skill in the art
would have modified Chang and Peters
by incorporating one or more additional functionalities, such as
one or more databases that store some or all words that the user
has encountered during his/her studies (e.g. storing one or more
words that the student encountered during reading in "My
Reading" file, storing one or more words that the student
encountered during writing in "My Writing" file, etc.), in order
to enable the system to refine the evaluation process based on
additional words so that the system would generate a more
comprehensive assessment result.
Final Act. 17.
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Appellants argue the "cited passages [ of Peters] do not describe
generating a writing vocabulary level and a separate reading level," and
"merely describe[] evaluating different sources 'to build a personal
vocabulary' for a student." Appeal Br. 27. Appellants additionally contend
Peters does not teach combining different levels to generate a composite
vocabulary level. Id.
Appellants' arguments do not persuasively address the Examiner's
findings as to how and why one of skill in the art would have combined the
identified teachings from Chang and Peters. Because the Examiner's finding
is that the limitations of claim 27 are met by these teachings being combined
in the way identified by the Examiner, Appellants' arguments regarding
Chang and Peters separately do not address the rejection.
Accordingly, we are not informed of error in the rejection of
representative claim 27 under 35 U.S.C. § 103(a). We sustain the rejection
of this claim, and the rejection of claim 28, which is rejected on the same
ground and not argued separately by Appellants.
Rejection V
Appellants argue the rejection of claim 11 is in error for the same
reasons argued in support of claim 5. Appeal Br. 27-28. For the same
reasons that we sustain the rejection of claim 5, we sustain the rejection of
claim 11 under 35 U.S.C. § 103(a).
Rejection VI
Appellants do not address the merits of the provisional double
patenting rejection, stating that the "rejection is not the subject of the present
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appeal" and that Appellants "will make a determination as to the filing of a
Terminal Disclaimer upon indication of allowable subject matter." Appeal
Br. 3, n.1. Although the provisional rejection may be obviated by future
events and may be resolved by the filing of a terminal disclaimer, Appellants
could have presented arguments on the merits of the rejection, but did not.
In the circumstances of this case, we summarily sustain the provisional
double patenting rejection of claims 1-12, 27, and 28.
DECISION
We affirm the Examiner's rejections of claims 1-12, 27, and 28 under
35 U.S.C. § 101 and 35 U.S.C. § 103(a). We sustain the provisional
rejection of claims 1-12, 27, and 28 on the grounds of nonstatutory
obviousness-type double patenting.
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
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