Ex Parte Green et al

Patent Trial and Appeal Board

Aug 7, 2018

12895737 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/895,737 09/30/2010
25096 7590 08/09/2018
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
NigelJ. Green
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.
086882-8009.USOl 8268
EXAMINER
BULLINGTON, ROBERT P
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/09/2018 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIGEL J. GREEN and MICKELLE WEARY 1
Appeal2017-000166
Application 12/895,737
Technology Center 3700
Before BRADLEY W. BAUMEISTER, ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-10, 16, 18, 19, 21, and 22. App. Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants list DreamBox Leaming, Inc. as the real party in interest.
Appeal Brief 2, filed March 4, 2016 ("App. Br.").
Appeal2017-000166
Application 12/895,737
THE INVENTION
Appellants describe the present invention as follows:
Systems and methods for generating reading
recommendation are disclosed. In one example embodiment a
reading material is sent as e-content to a reading device. An
evaluation process is executed to evaluate a reader's reading
ability based on the reading material. The evaluation process
may take as first input data collected from the reading device. A
recommendation process is executed to identify a reading
recommendation for the reader based on the reader's reading
ability and the reading recommendation is provided to the reader.
Abstract.
Independent claim 1 illustrates the claimed invention:
1. A method implemented m a computing system,
compnsmg:
sending, by a computing system, reading material as
e-content to a reading device, the reading material including
articles, essays, poems, or books;
executing, by the computing system, an evaluation process
to evaluate a present reading ability of the reader based on the
reading material, wherein the evaluation process collects first
input data from the reading device;
receiving, by the computing system, a goal reading level
and a goal time for the reader, the goal time being a time for
achieving the goal reading level;
retrieving, by the computing system, a curriculum of an
educational program attended by the reader;
estimating, by the computing system, a future level of the
reading ability of the reader based on the evaluation process;
executing, by the computing system, a recommendation
process to identify a reading recommendation of a list of books
for the reader based on:
the present reading ability of the reader,
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Application 12/895,737
the goal reading level and the goal time for the
reader,
the curriculum of the educational program, and
the estimated future level of the reading ability of
the reader; and
displaying the reading recommendation of the list of books
to enable a user to purchase one or more books from the list of
books for the reader.
App. Br. 19 (Claims Appendix).
THE REJECTION AND CONTENTIONS
Claims 1-10, 16, 18, 19, 21, and 22 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 2-9. 2
The Examiner determines the claims are directed to a patent-ineligible
abstract idea----specifically, a method of organizing human activities. Final
Act. 2. The Examiner further determines that "the additional elements or
combination of elements in the claims other than the abstract idea per se
amounts to no more than[] mere instructions to implement the idea on a
computer." Id.
Appellants present three arguments. App. Br. 6-17. Appellants first
argue that the Examiner failed to establish a prima facie case of
unpatentability. Id. at 6, 9-10. Appellants next argue that the claims are not
directed to a patent-ineligible abstract idea because the claims do not
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
February 4, 2015 ("Final Act."); the Examiner's Answer mailed July 28,
2016 ("Ans."); and the Reply Brief filed September 28, 2016 ("Reply Br.").
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Application 12/895,737
preclude use of any abstract idea. Id. at 6-8, 10-14. Appellants finally
argue that the claims recite significantly more than the abstract idea. Id. at
8-9, 14--17. We address these arguments more fully below seriatim.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
Regarding the question of patent eligibility under 35 U.S.C. § 101, the
Supreme Court has set forth an analytical "framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-73 (2012)).
In the first step of the analysis, we determine whether the claim at issue is
"directed to" a judicial exception, such as an abstract idea. Id. at 2355. If
not, the inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346
(Fed. Cir. 2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
Cir. 2016). If the claim is determined to be directed to an abstract idea, then
we consider under step two whether the claim contains an "inventive
concept" sufficient to "transform the nature of the claim into a patent-
eligible application." Alice, 134 S. Ct. at 2355 (quotations and citation
omitted).
In considering whether a claim is directed to an abstract idea, we
acknowledge, as did the Supreme Court, that "all inventions at some level
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Application 12/895,737
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We therefore look to whether the
claim focuses on a specific means or method that improves the relevant
technology or is instead directed to a result or effect that, itself, is the
abstract idea and merely invokes generic processes and machinery. See
Enfzsh, 822 F.3d at 1336.
If the claim is directed to an abstract idea, we then must consider
whether the claim contains an element or a combination of elements that is
sufficient to transform the nature of the claim into a patent-eligible
application. Ultramercial, Inc. v. Hulu LLC, 772 F.3d 709, 714 (Fed.
Cir. 2014); Alice, 134 S. Ct. at 2355.
In applying step two of the Alice analysis, we must
"determine whether the claim[] do[es] significantly more than
simply describe [the] abstract method" and thus transform the
abstract idea into patentable subject matter. We look to see
whether there are any "additional features" in the claim[] that
constitute an "inventive concept," thereby rendering the claim[]
eligible for patenting even if [it is] directed to an abstract idea.
Those "additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) ( citations omitted).
A claim that "merely require[ s] generic computer implementation[]
fail[s] to transform [an] abstract idea into a patent-eligible invention." Alice,
134 S. Ct. at 2357.
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ANALYSIS
I.
Appellants argue that although the Examiner determines the claims
recite the abstract idea of organizing human activities and identifying a
reading recommendation of a list of books for a reader, the Examiner does
not offer any case law in which the courts have compared such activities to
the abstract idea of organizing human activities. App. Br. 10.
This argument is unpersuasive. Long before the advent of the
Internet, teachers have taught students how to read based on the mental and
manual steps of providing reading material, evaluating a student's ability to
read the material with a test, determining a student's prior education or
curriculum, estimating how the student's reading will advance or progress,
identifying books to help the student reach future reading goals, and
providing a list of such books to the student.
Furthermore, the courts have approved characterizing such methods of
teaching as being directed to a general concept of a mental activity that
constitutes an abstract idea. See, e.g., Ex;parte Alsabah, Appeal No. 2013-
001551, 2015 WL 4659226, at *2-6 (PTAB July 29, 2015), ajf'd, 677
F. A.pp'x. 684 (Fed. Cir. 2017). In Alsabah, the Board addressed the patent
eligibility of claims that were directed to a method of teaching a blind person
hmv to read Arabic. See, e.g., id. at *2----3 (citing independent method
claim 2). As upheld by our reviewing comi, the Board determined that "the
steps of synopsizing, consolidating, optimizing, and teaching, as per
c1aim[J 2 ... , are capable of being done by a human being simply by
observing and gathering data[,] which falls in the general concept of a
mental activity." Id at *6.
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Whether the Examiner characterizes the present abstract idea as a
method of organizing human activity or, instead, as a method relating to
mental activity, the characterization does not affect our ultimate
determination that the claims are directed to an abstract idea. The level of
abstraction at which the Examiner describes the invention does not change
the accuracy of the Examiner's determination. Apple v. Ameranth, Inc., 842
F.3d 1229, 1240 (Fed. Cir. 2016) ("An abstract idea can generally be
described at different levels of abstraction").
II.
Appellants argue that the claims do not preclude the use of any
abstract idea. App. Br. 10-14. Even assuming arguendo Appellants'
assertion is correct, this argument is unpersuasive. The Supreme Court has
described "the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre-
emption." Alice, 134 S. Ct. at 2354. However, characterizing preemption as
a driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. As our reviewing court has
explained: "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability" and "[ f]or
this reason, questions on preemption are inherent in and resolved by the §
101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Id.
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III.
We also are unpersuaded by Appellants' argument (App. Br. 14--17;
Reply Br. 5-6) that the present claims recite significantly more than the
abstract idea, discussed above. Appellants' Specification describes only at a
high level and in generalized functional terms, the reading device that is
used to automate the abstract concept of teaching:
reading material is sent as e-content to the reading device. The
reading device may be a multi-media device. The reading device
may be a computing device. As an example, the reading device
may be a smart phone, handheld computer, a tablet personal
computer, a laptop computer and a personal computer. As
another example, the reading device may be software and a
hardware platform developed for rendering and displaying the
e-contents, i.e., Amazon Kindle and/or Apple iPad. The reading
material may be sent to the reading device from a server device
via a communication system. As an example, the reading
material for the tablet personal computer may be sent using the
internet. As another example, the reading material for the smart
phone may be sent using the internet or a telephone service
earner.
Spec. 6-7.
The Specification also describes at a high level and in generalized
functional terms, the automation of the evaluation process (id. at 7-9), the
automation of the student inputs (id. at 9-11 ), the automation of generating a
reading recommendation (id. at 11 ), and the automation of displaying the
reading recommendation (id. at, e.g., 11-14).
The breadth and generality by which these components are described
reasonably supports the Examiner's determination (Ans. 7-8) that the
additional components are being used in their well-understood, routine, and
conventional manners to automate the recited abstract idea. See Affinity
Labs v. Amazon, 838 F.3d 1266, 1269 (Fed. Cir. 2016) (claims directed to
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Application 12/895,737
the use of conventional or generic technology in a nascent but well-known
environment are directed to an abstract idea, not to a concrete embodiment
of that idea). These additional claim elements, considered both individually
and as an ordered combination, then, cannot reasonably be said to transform
the nature of the claim into a patent-eligible invention.
Furthermore, Appellants do not persuasively rebut the Examiner's
determination. Appellants assert that the claims recite significantly more
than the abstract idea. App. Br. 15. However, Appellants attempt to support
this conclusory assertion merely by reciting a substantial portion of the claim
language:
For example, claim 1 recites a combination of features including
executing an evaluation process to evaluate a present reading
ability of a reader based on reading material, wherein the
evaluation process collects input data from a reading device;
receiving a goal reading level and a goal reading time for the
reader; retrieving a curriculum of an educational program
attended by the reader; estimating a future level of the reading
ability of the reader based on the evaluation process; executing
an evaluation process to identify a reading recommendation of a
list of books for the reader based on the present reading ability
of the reader, the goal reading level and the goal reading time for
the reader, the curriculum of the educational program, and the
estimated future level of the reading ability of the reader; and
displaying the reading recommendation of the list of books to
enable a user to purchase one or more books from the list of
books for the reader.
Id. Appellants provide a similar argument for independent claim 16. Id.
at 15. The Board rules clearly explain "[a] statement [that] merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim." 37 C.F.R. § 41.37(c)(l)(iv).
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Moreover, the claim language that Appellants allege constitutes
significantly more is, in fact, directed to the underlying abstract idea, as well
as the devices by which the abstract idea is automated. Restated,
Appellants' arguments conflate Alice's step-two inquiry into whether the
claim recites "significantly more" with Alice's threshold step-one inquiry
into whether the claims are directed to an abstract idea. As such, Appellants
do not persuade us that the claims contain significantly more than the
abstract idea, itself. Appellants, accordingly, do not persuade us of error in
the Examiner's determination that the independent claims are directed to
patent-ineligible subject matter. See Ex parte Frye, 94 USPQ2d 1072, 1075
(instructing the Board to review the appealed rejections for error based upon
the issues identified by Appellants, and in light of the arguments and
evidence produced thereon).
We, therefore, sustain the Examiner's rejection of independent
claims 1 and 16, as well as that of dependent claims 2-10, 18, 19, 21, and
22, which Appellants do not argue separately. See generally App. Br.; see
generally Reply Br.
DECISION
The Examiner's decision rejecting claims 1-10, 16, 18, 19, 21, and 22
is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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