Ex Parte Herger et al

Patent Trial and Appeal Board

Jul 16, 2018

14831636 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/831,636 08/20/2015
48813 7590 07/18/2018
LAW OFFICE OF IDO TUCHMAN (YOR)
PO Box 765
Cardiff, CA 92007
FIRST NAMED INVENTOR
Lorraine M. Herger
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.
YOR920120269US3 4198
EXAMINER
OBERLY, VAN HONG
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
pair@tuchmanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORRAINE M. HERGER, NEAL M. KELLER,
MATTHEW A. McCARTHY, and CLIFFORD A. PICKOVER1
Appeal2018-000097
Application 14/831,636
Technology Center 2100
Before ROBERT E. NAPPI, KALYANK. DESHPANDE, and
DAVID M. KOHUT Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1 through 11. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is International Business
Machines Corporation. Appeal Brief 2.
Appeal2018-000097
Application 14/831,636
INVENTION
Appellants' disclosed invention is directed to a method for
determining if a listing of a service should be added to a service catalog
based upon feedback received about a candidate service. See Abstract.
Claim 1 is representative of the invention and reproduced below.
1. A method for listing services in a service catalog, the
method comprising:
receiving first feedback about a service not published in
the service catalog and not created, the first feedback about the
service being used to determine a first score for the service, the
first feedback includes implicit feedback;
determining by a computer processor whether the first
score for the service not published in the service catalog exceeds
a first threshold;
if the first score for the service exceeds the first threshold,
listing the service as a published service in the service catalog;
receiving second feedback about the published service, the
second feedback about the published service being used to
determine a second score for the service;
determining whether the second score for the service
exceeds a second threshold; and
if the second score for the service exceeds the second
threshold, sending a signal to a service actualization unit to create
the service.
REJECTIONS AT ISSUE2
The Examiner rejected claims 1 through 11 under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. Answer 2-9.
2 Throughout this Decision, we refer to the Appeal Brief filed April 25,
2017, Reply Brief filed October 3, 2017, Final Office Action mailed
November 25, 2016, and the Examiner's Answer mailed September 25,
2017.
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Application 14/831,636
The Examiner rejected claims 1 through 8 under 35 U.S.C. § I03(a)
for being unpatentable over Chakrabarti (US 2012/0078747 Al; publ. Mar.
29, 2012) and Powell (US 2010/0114961 Al; publ. May 6, 2010). Final
Act. 5-8.
The Examiner rejected claim 9 under 35 U.S.C. § I03(a) for being
unpatentable over Chakrabarti, Powell, and Bell (US 2007 /0220510 A 1;
publ. Sept. 20, 2007). Final Act. 8-9.
The Examiner rejected claim 10 under 35 U.S.C. § I03(a) for being
unpatentable over Chakrabarti, Powell, and Hadar (US 2011/0231229 Al;
publ. Sept. 22, 2011). Final Act. 9-10.
The Examiner rejected claim 11 under 35 U.S.C. § I03(a) for being
unpatentable over Chakrabarti, Powell, and Hadar (US 2011/0208606 Al;
publ. Aug. 25, 2011). Final Act. 10.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: laws of
nature, natural phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). The Supreme Court sets
forth a two-part "framework for distinguishing patents that claim laws of
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nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
Id.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... [Mayo, 566 U.S. at
76-77]. If so, we then ask, "[w]hat else is there in the claims
before us?" Id., at ... [77-78]. 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., ... at [77-78]. We have described step
two of this analysis as a search for an "'inventive concept"'-
i. e., an element or combination of elements that is "sufficient to
ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself." Id., at ... [71-
73].
Although an abstract idea itself is patent ineligible, an application of
the abstract idea may be patent eligible. Alice, 134 S. Ct. at 2355. Thus, we
must 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 79, 78). The claim must contain elements or a
combination of elements that are "'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ abstract idea]
itself."' Id. (quoting Mayo, 566 U.S. at 72-73). The Federal Circuit has
explained that, in determining whether claims are patent-eligible under
Section 101, "the decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided." Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
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The Federal Circuit also noted in that decision that "examiners are to
continue to determine if the claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts."
Id. at 1294 n.2.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have not persuaded us of error in the
Examiner's conclusion that the claims are directed to patent-ineligible
subject matter and that the claims are obvious over the prior art.
Rejection under 35 USC§ 101
Appellants argue, on pages 4 through 6 of the Reply Brief, that the
Examiner's rejection under§ 101 is in error as claim 1 is not directed to an
abstract idea. Specifically, Appellants argue that representative claim 1 is
not similar to claims found to be directed to abstract ideas by the court in
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) or Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1367 (Fed. Cir. 2015). Further, Appellants argue, on pages 6 through
9 of the Reply Brief, that claim 1 is directed to an improvement to a
technological process and recites significantly more than the abstract
concept.
These arguments have not persuaded us of error in the Examiner's
rejection of claim 1 under 35 U.S.C. § 101. The Examiner has found, that
claim 1 recites steps of collecting information, analyzing it and displaying
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results of the collection analysis. Answer 3--4 ( citing Electric Power Group
and Intellectual Ventures I). We concur, claim 1 recites two steps of
receiving feedback, which are merely collection of data, further, the claim
recites the steps of determining a score based upon the feedback and
comparing the score to a threshold, which are a form of data analysis.
Finally the claim recites a step of sending a signal based upon the analysis.
We concur, with the Examiner that these steps are similar to those held
abstract by the court in Electric Power Group, and also note that they are
similar to those held by the court to be abstract in Content Extraction and
Transmission LLC. v. Wells Fargo Bank, National Association, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (holding that the claims were "drawn to the
abstract idea of 1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory"). We
are not persuaded by Appellants' argument that the claim differs from those
at issue in Electric Power Group as Appellants' claims are to a "new source
and/or type of information: feedback about a service not published in the
service catalog and not created." Reply Br. 6. Receiving such feedback as
how to improve or create a product/service is well known, e.g., the use of
suggestion boxes or surveys to solicit opinions. Thus, Appellants'
arguments have not persuaded us the Examiner erred in finding the claims
directed to an abstract idea.
Appellants' arguments directed to the second part of the Alice test,
similarly have not persuaded us of error in the Examiner's rejection.
The Examiner finds and we agree that the claim recitation of a
computer processor and actualization unit recites generic computer
components. Answer 4. Further, the Examiner finds that the claim does not
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recite a combination of elements, which improves the functioning of the
computer or any technology. We concur. Appellants argue:
[C]laim 1 clearly recites more than just "collecting, displaying
and manipulating data." For example, claim 1 requires receiving
first feedback about a service not published in the service catalog
and not created and determining whether the first score for the
service not published in the service catalog exceeds a first
threshold by a computer processor. Claim 1 not only ties its
limitation to a particular machine or apparatus, but the claim
specifically recites how the computer processor is used to list
services in a service catalog.
Reply Br. 8. We are not persuaded by this argument. Appellants'
Specification, at paragraphs 38 and 39, discusses how the computer
implements the claimed method, in general terms and does not
identify a specific machine. Further, we do not find that recitation of
a service catalog comparison of a data value to a threshold represents
a particular machine or apparatus. Thus, Appellants have not
persuaded us the Examiner erred in rejecting claim 1 under 35 U.S.C.
§ 101.
With respect to claims 2 through 11, Appellants argue:
[T]he Office merely repeats the claimed limitations and
concludes that the claims are "further directed toward an abstract
idea." Answer, pp. 3-5. The Office does not provide any finding
of fact or rational in support of its conclusory statements.
Reply Br. 9. We disagree with Appellants, while the Examiner does repeat
the claim language, the Examiner's rejection also states why the Examiner
considers the additional claim language does not draw the claim to patent
eligible subject matter (e.g., regarding claim 2, which includes limitations
directed to the feedback being implicit or explicit, the Examiner finds that
this is directed to the nature of the feedback ( data gathered) and is abstract
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similar to the data gathering steps in Electric Power Group). Thus, we do
not consider Appellants' arguments directed to claims 2 through 11 to
address the Examiner's findings and conclusions. Rather, Appellants'
arguments regarding claims 2 through 11 are considered to be nothing more
than a general allegation of patentability and are not considered separate
patentability arguments. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art"). Accordingly, we sustain the Examiner's
rejection of claims 1 through 11 under 35 U.S.C. § 101.
Rejection under 35 US.C. § 103(a)
Appellants argue that the Examiner's obviousness rejection is in error
as the combination would render Chakrabarti unsatisfactory for its intended
purpose and change the principle of operation of Chakrabarti. App. Br. 6-7,
Reply Br. 10-12. Specifically, Appellants argue:
Chakrabarti uses a published catalog to receive both explicit
feedback and implicit feedback. Without the published catalog,
user feedback would not be received. Since Chakrabarti
discloses a recommendation system that uses explicit and
implicit feedback to assess the quality of the recommendation
rules, the Examiner's proposed modification of Chakrabarti
would render Chakrabarti unsatisfactory for its intended purpose.
App. Br. 6-7 ( emphases omitted).
We are not persuaded of error by these arguments as we do not find
combining Chakrabarti with the teachings of Powell changees the intended
purpose of Chakrabarti. Chakrabarti is primarily directed to receiving
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feedback on recommendations to assess quality of recommendation rules.
See Abstract. While Chakrabarti discusses the assessment of
recommendations in context of a catalog, the Examiner points out that
Chakrabarti is not limited to a catalog, and can include other repositories of
items. Answer 9--10 ( citing Chakrabarti' s discussion of using other
repositories of items and systems in para. 13). Thus, we do not concur with
the premise of Appellants' argument that the receiving of feedback is so
intertwined with a catalog that modifying the assessment to include feedback
about recommendations of non-catalog items would render it unsatisfactory,
and change the principle of operation. Thus, we are not persuaded of error
in the Examiner's rejection of obviousness rejection representative claim 1
under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's rejection,
under 35 U.S.C. § 103(a), of claim 1 and claims 2 through 7 grouped with
claim 1.
Appellants' have not presented arguments directed to the obviousness
rejections of claims 8 and 9. Further, Appellants argue that the Examiner's
obviousness rejections of claims 10 and 11 are in error for the same reason
as claim 1. Answer 7, 8. Accordingly, we sustain the Examiner's
obviousness rejections of claims 8 through 11 for the same reasons as claim
1.
DECISION
We affirm the Examiner's rejection of claims 1 through 11 under 35
U.S.C. § 101 for being directed to patent-ineligible subject matter and the
Examiner's rejections of claims 1 through 11 under 35 U.S.C. § 103(a).
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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
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