Ex Parte Ho et al

Patent Trial and Appeal Board

Feb 20, 2018

14484240 (P.T.A.B. Feb. 20, 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.
170Cont3 1932
EXAMINER
HYLINSKI, STEVEN J
ART UNIT PAPER NUMBER
3717
MAIL DATE DELIVERY MODE
14/484,240 09/11/2014
44729 7590 02/
IPLEARN, LLC
1807 LIMETREE LANE
MOUNTAIN VIEW, CA 94040
Chi Fai Ho
02/20/2018 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 CHI FAI HO and PETER P. TONG
Appeal 2017-002625
Application 14/484,240
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Chi Fai Ho and Peter P. Tong (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision in the Final Action (dated Mar. 1,
2016, hereinafter “Final Act.”) rejecting claims 1—15. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
1 IpLeam, LLC is the applicant as provided in 37 C.F.R. § 1.46 and is
identified as the real party in interest in Appellants’ Appeal Brief 1 (filed
May 10, 2016, hereinafter “Appeal Br.”).
Appeal 2017-002625
Application 14/484,240
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants’ invention relates to “helping a student to focus on study
materials on a computer by restricting the student from enjoying
entertainment materials on the computer.” Spec. para. 8.
Claim 1, the sole independent claim, is shown below and is
representative of the claimed invention:
1. A computing apparatus configured to use a plurality of
programs, which include at least a learning program with its
primary purpose for a user to learn, and at least an
entertainment program with its primary purpose to entertain the
user, the apparatus comprising:
a device, which the entertainment program needs to
fulfill its primary purpose and which the learning program
needs to fulfill its primary purpose;
an access filter; and
a controller, under a predetermined condition, configured
to modify the access filter on coupling between the device and
at least a portion of the entertainment program, while to allow
the coupling between the device and the learning program,
wherein under the predetermined condition, configured to
modify the access filter includes selecting from the list of (a)
changing the access filter from allowing to restricting coupling
between the device and the at least a portion of the
entertainment program so as to adversely affect the
entertainment program from fulfilling its primary purpose, and
(b) changing the access filter from restricting to allowing
coupling between the device and the at least a portion of the
entertainment program so as not to adversely affect the
entertainment program from fulfilling its primary purpose.
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REJECTIONS
I. The Examiner rejected claims 1—15 under 35 U.S.C. § 101 as directed
to ineligible subject matter.
II. The Examiner rejected claim 1 under 35 U.S.C. § 112, second
paragraph as being indefinite.
III. The Examiner rejected claims 1—6, 8—12, 14, and 15 under 35 U.S.C.
§ 102(b) as being anticipated by Yuen (US 5,716,273, issued Feb. 10,
1998).
IV. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Yuen.
V. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Yuen and Sweetser (US 5,168,372, issued Dec. 1,
1992).
ANALYSIS
Rejection I
Appellants have not presented arguments for the patentability of
claims 2—15 apart from claim 1. See Appeal Br. 4—11. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2—15 standing or falling with claim 1.
Section 101 of the Patent Act defines patent-eligible subject matter:
“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.” 35 U.S.C. § 101. In interpreting
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this statutory provision, the Supreme Court has held that its broad
language is subject to an implicit exception for “laws of nature, natural
phenomena, and abstract ideas,” which are not patentable. Alice Corp.
Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014).
The Supreme Court has set forth “a 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,
134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 132 S. Ct. 1289, 1294 (2012)). According to the Supreme Court’s
framework, we must first determine whether the claims at issue are directed
to one of those concepts (i.e., laws of nature, natural phenomena, and
abstract ideas). Id. If so, we must secondly “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. The Supreme Court characterizes the
second step of the 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.
Step One
In making the rejection of claim 1, the Examiner finds that “the claims
. . . are considered to be drawn to an abstract idea (idea for restricting a
student’s access to entertainment materials).” Final Act. 8. According to the
Examiner,
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Supervising whether a student has access to entertainment
material or not is a long-standing, fundamental idea for
organizing human activity that has traditionally been
implemented by parents and teachers who are encouraging a
child to focus on their homework or studies by restricting the
child’s access to television or other non-educational leisure
activities such as computer or video games.
Id. at 9.
The first prong of the test requires us to determine whether the
challenged claims are directed to an abstract idea. To that end, Appellants
argue that claim 1 passes step 1 of Alice because it recites “at least a device,
an access filter, and a controller, working in [a] specific technical manner for
specific technical purposes.” Appeal Br. 4. According to Appellants,
claim 1 does not “attempt to preempt every application of ‘restricting a
student’s access to entertainment materials’ . . . or . . .‘supervising a student’
. . . because .... [claim 1] recite[s] a very specific technological approach to
control access to a technical device,” and moreover, the Examiner’s applied
prior art of Yuen and Sweetser evidence that claim 1 “do[es] not stop the
practice of these patented approaches.” Id. at 6; see also Reply Brief 3^4
(dated Dec. 5, 2016, hereinafter “Reply Br.”).
We agree with the Examiner that claim 1 is “directed to a long-
practiced fundamental idea for supervising a study session of a student.”
Examiner’s Answer 2 (dated Oct. 6, 2016, hereinafter “Ans.”). The
Examiner is correct in that
While a student is accessing educational materials, a
supervising entity may limit or disallow the student from
accessing non-educational, entertainment materials. This
fundamental idea has traditionally been practiced mentally and
through human behavior by a parent supervising a school-aged
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child, when a parent limits a child’s access to entertainment
such as by prohibiting watching TV during a certain time
period, so that the child can focus on his or her homework
without distractions.
Id. At best, claim 1 provides a practical application for supervising a student
to focus on study material by restricting access to entertainment material.
But a recitation of practical application for an abstract idea is insufficient to
transform an abstract idea into an inventive concept. Cf CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court
[Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
of a practical application for the calculation could alone make the invention
patentable.”). Furthermore, we note that “filtering content is an abstract idea
because it is a longstanding, well-known method of organizing human
behavior, similar to concepts previously found to be abstract.” Bascom
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348
(Fed. Cir. 2016).
As to Appellants’ pre-emption argument (see Appeal Br. 5—7, Reply
Br. 3—4), the Supreme Court has stated that “patents that. . . integrate the
building blocks [of human ingenuity] into something more, [thereby]
transforming] them into a patent-eligible invention . . . pose no comparable
risk of pre-emption, and therefore remain eligible for the monopoly granted
under our patent laws.” Alice, 134 S. Ct. at 2354—55 (citations and
quotations omitted). Although a concern regarding preemption is one that
“undergirds [the Supreme Court’s] § 101 jurisprudence” overall {id. at
2358), it is not an issue addressed in the first step of the analysis. Cf., e.g.,
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir.
2014) (discussing preemption in the context of the second step of the
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analysis). In other words, in the first step of the analysis, the issue is not
whether the claims preempt all possible implementations of the identified
abstract idea; rather, the issue is “the ‘focus’ of the claims, their ‘character as
a whole.’” Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—
36 (Fed. Cir. 2016) and Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015)).
In contrast, the second step, when reached, looks “more precisely at
what the claim elements add.” Id. Moreover, characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the dispositive test for patent eligibility. Instead, “[t]he
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. Thus, that claim 1 may recite “a very
specific technological approach to control access to a technical device”
(Appeal Br. 6) does not demonstrate error in the determination that claim 1
is directed to patent-ineligible subject matter.
In conclusion, when read as a whole, independent claim 1 is directed
to supervising student’s access to entertainment material during study time
(i.e., filtering content), and, for the reasons discussed above, constitutes an
abstract idea. The question to be settled next is whether claim 1 recites an
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element, or combination of elements, that is enough to ensure that the claim
is directed to significantly more than an abstract idea.
Step Two
With respect to the second step of the Alice framework, the Examiner
determines,
The computer claimed as implementing the abstract ideas is
merely outlined as having programs and a storage medium. The
fact that the computing device of the invention is not claimed as
having any particular input/output devices or other particularly-
adapted hardware tied to the claimed ideas, especially in the
context of an apparatus claim in which an invention must be
distinguished over the prior art in terms of structure not function
alone, is evidence that the apparatus is of peripheral importance
relative to the abstract ideas.
Final Act. 9. Thus, according to the Examiner, “the claims lack an inventive
concept that would transform them into [patent-eligible] application of the
incorporated abstract idea.” Id. at 10.
In response, Appellants argue that the use of generic computers and
known hardware is not dispositive of patentable subject matter eligibility.
See Appeal Br. 8—9 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014) and Diamond v. Diehr, 450 U.S. 175 (1981)).
According to Appellants, claim 1 is similar to Enflsh, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016) because it improves computing
functionalities with a device, an access filter, and a controller that work
together in a specific manner for a specific purpose. Appeal Br. 9-10; Reply
Br. 2—3. Appellants further contend that the Examiner has “just isolated one
aspect of the claim—coupling or un-coupling entertainment content and
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coupling learning content—and ignored the other claim languages,” thereby
overgeneralizing claim 1 into a few words. Reply Br. 5 (citing McRo, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Thus,
Appellants conclude that “[ajnalyzing the claims as a whole, one would see
that the claimed invention includes inventive technical solutions that address
a technology-specific problem as in DDR Holdings.” Id. at 6.
We do not find Appellants’ arguments persuasive. The recited
elements of a device, an access filter, and a controller are generic
components. More specifically, the claimed device, access filter, and
controller are described in Appellants’ Specification2 and claimed only in a
wholly generic and functional manner, much like computer components in
Alice. See Alice, 134 S. Ct. at 2358—60. In other words, these elements
function in a conventional manner to input and output data (i.e., the device),
to restrict and permit access of content (i.e., access filter), and to execute
operations (i.e., the controller). See id. at 2359-60 (holding patent-ineligible
claims that “amount to ‘nothing significantly more’ than an instruction to
apply the abstract idea . . . using some unspecified, generic computer” and in
which “each step does no more than require a generic computer to perform
generic computer functions”) (internal quotation marks, citation omitted).
The fact that these generic computer functions are applied to the particular
environment of a computer-aided-educational device is not sufficient to
2 “[DJevices . . . include[e]. . . speaker 300, a position-pointing device
306, and an output device 304, which can be the monitor 178.” Spec,
para. 114. “[T]he access filter 102 includes a device driver . . . which
typically is a software program for handling he device.” Id. para. 119.
With respect to the controller, Appellants’ Specification merely states
a “controller 108.” Id. paras. 113, 118, 119.
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circumvent the prohibition against patenting an abstract idea. See Bilski, 561
U.S. at 610-11.
Stated differently, claim 1 does not claim a device, an access filter, or
a controller that would make the function performed by these claimed
elements unconventional to remove the claim from the realm of an abstract
idea. The test is not whether the claimed device, access filter, and controller
can perform a “new” function, i.e., supervising a student to focus on study
material by restricting access to entertainment material. It is whether the
function allows the claimed device, access filter, and controller to function
better. Here, like in Alice, the generic claimed device, access filter, and
controller perform the task of supervising a student to focus on study
material by restricting access to entertainment material more efficiently than
a human; however, that does not make the invention patent-eligible. We
agree with the Examiner that because “[t]he instant claims are directed to the
result or effect of coupling or uncoupling entertainment content and
coupling learning content,” “[t]he claimed solution is the same solution
implemented manually by a parent — limiting how much access a student has
to non-educational content while the student is supposed to be learning.”
Ans. 5.
Contrary to Appellants’ arguments, claim 1 is not analogous to the
claims recited in DDR Holdings, Enfish, McRO, and Diehr. Unlike the
situation in DDR Holdings, in which the problem of retaining website
visitors was a challenge particular to the Internet (DDR Holdings, 773 F.3d
at 1257), the problem of supervising a student to focus on study material by
restricting access to entertainment material is not a challenge particular to a
computer environment. Rather, “[t]he problem of a student needing
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assistance in managing his study habits already existed long before the
advent of computers.” Ans. 5. Hence, claim 1 at most applies generic
computer technology to supervise the study session of a student.
In contrast with the claims in Enfish, which were directed to an
improved computer database technique, see Enfish, 822 F.3d at 1338—1339,
the focus of claim 1 “is not on such an improvement in computers as tools,
but on certain independently abstract ideas that use computers as tools.”
Elec. Power, 830 F.3d at 1354. In Appellants’ claim 1, the claimed device,
access filter, and controller do not affect an improvement to computer
functionality itself, but instead, focus on the process (i.e., supervising a
student to focus on study material by restricting access to entertainment
material) that qualifies as an abstract idea, for which computer technology is
invoked merely as a tool. As discussed supra, claim 1 is directed to the task
of supervising a student to focus on study material by restricting access to
entertainment material. As the Federal Circuit has made clear “the basic
character of a process claim drawn to an abstract idea is not changed by
claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium.” See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375—76 (Fed.
Cir. 2011) (citing In re Abele, 684 F.2d 902 (CCPA 1982)).
Nor does claim 1 recite a specific technological improvement, such as
the improvement over existing manual 3-D animation techniques recited by
the claims in McRO. See McRO, 837 F.3d at 1313—16. Indeed, Appellants
have not presented any persuasive evidence that the recited device, access
filter, and controller provide a technological improvement over an existing
device, access filter, and controller.
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For similar reasons, we reject Appellants’ assertion that the present
claims are similar to the claims in Diehr, which were found to be directed to
an improved process for molding rubber articles, rather than the process’s
underlying mathematical formula (i.e., the Arrhenius equation). See Diehr,
450 U.S. at 181, 191-93.
For the above reasons, the recited elements, considered individually
and as an ordered combination, do not constitute an “inventive concept” that
transforms independent claim 1 into patent-eligible subject matter. See
Alice, 134 S. Ct. at 2355. Accordingly, we do not sustain the rejection of
claim 1 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
Claims 2—15 fall with claim 1.
Rejection II
Independent claim 1 recites, inter alia, “a controller . . . configured to
modify the access filter on coupling between the device and ... the
entertainment program, while to allow the coupling between the device and
the learning program.” Appeal Br. A-l, Claims App (emphasis added).
The Examiner finds that “it is unclear whether ‘on coupling’ is
intended to describe a characteristic of the filter (‘related to coupling’), or a
time-specific condition (‘at the time of coupling’).” Final Act. 11. The
Examiner further finds that “[i]t is further unclear how the phrase ‘while to
allow the coupling’ is intended to limit the claim.” Id.
In response, Appellants argue that “modifying the access filter ‘on
coupling’ pertains to the issue of coupling.” Reply Br. 9—10; see also
Appeal Br. 12—13 (citing Spec, paras. 16—20, 113, 126—33, 135, 137,
and 144). According to Appellants, “the phrase ‘on coupling’ designates the
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subject of coupling as the issue on which the access filter is modified, based
on predetermined conditions.” Reply Br. 10 (citing Spec. para. 144).
Appellants further contend that the phrase “while to allow coupling” means
“simultaneously allowing coupling of both the entertainment program and
the learning program to the device under certain condition^].” Appeal
Br. 14—15 (citing Spec, paras, 16—19, 113); see also Reply Br. 11.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the [Specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Here, an ordinary and customary meaning of the term “on” is
“with respect to.” Merriam Webster’s Collegiate Dictionary (10th ed. 2005).
An ordinary and customary meaning of the term “while” is “similarly and at
the same time.” Id. Accordingly, an ordinary and customary meaning of the
above disputed limitation is that of a controller configured to modify the
access filter with respect to coupling between the device and the
entertainment program, and, at the same time, allowing coupling between
the device and the learning program. Such an interpretation is consistent
with Appellants’ Specification, which describes controller 108 modifying
access filter 102 to restrict device 104 from coupling to an entertainment
program, based on various factors, such as, study time, time of day, or
student’s performance, but simultaneously allowing device 104 to couple to
a study program. Spec, paras. 20, 113, Fig. 3.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 112, second paragraph, of claim 1 as being
indefinite.
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Rejection III
The Examiner finds that because “[n]o claim limitations are directed
to the notion of simultaneous coupling of learning and entertainment
content,” Yuen discloses all the limitations of independent claim 1. Final
Act. 3 (emphasis added), 11, and 12. According to the Examiner, claim 1
does not “require[] the device to be coupled with entertainment and learning
programs concurrently.” Ans. 9. The Examiner construes the phrase “while
to allow the coupling” to “merely require[] that the device be capable of and
ready to couple . . . with the learning content.” Id.
In response, Appellants argue that the use of the term “while” in the
phrase “while to allow coupling” in claim 1 “means that as the controller
modifies the access filter regarding the entertainment program, the controller
allows the coupling of the learning program.” Reply Br. 12. According to
Appellants, claim 1 requires, inter alia, “allowing coupling of both
entertainment program and learning program at the same time to a device,”
whereas “Yuen does not teach or suggest such limitations.” Appeal Br. 16.
We agree with Appellants for the following reasons. As discussed
supra in the indefmiteness rejection of claim 1, an ordinary and customary
meaning of the term “while” is “similarly and at the same time.” We further
noted above that we interpret the limitation of a “controller configured to
modify the access filter on coupling . . . while to allow coupling between the
device and the learning program,” to be a controller configured to modify
the access filter with respect to coupling, and, at the same time, allowing
coupling between the device and the learning program. In contrast, Yuen
discloses controller 320 switching switch 300 from amusement input 306 to
educational input on TV 204 and vice versa. Yuen, col. 5,11. 15—39. Hence,
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Appellants are correct that Yuen’s TV 204 “either gets educational material
or amusement material,” but not both, as required by independent claim 1.
Appeal Br. 15.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 102(b) of claims 1—15 as anticipated by Yuen.
Rejections IV and V
The Examiner’s modification of Yuen and use of the Sweetser
disclosure does not remedy the deficiency of the Examiner’s anticipation
rejection based upon Yuen, discussed supra. See Final Act. 15—16.
Therefore, for the same reasons discussed above, we also do not
sustain the rejections under 35 U.S.C. § 103(a) of claim 13 as unpatentable
over Yuen and of claim 7 as unpatentable over Yuen and Sweetser.
SUMMARY
The Examiner’s decision to reject claims 1—15 under 35 U.S.C. § 101
as directed to ineligible subject matter is affirmed.
The Examiner’s decision to reject claim 1 under 35 U.S.C. § 112,
second paragraph as being indefinite is reversed.
The Examiner’s decision to reject claims 1—6, 8—12, 14, and 15 under
35 U.S.C. § 102(b) as being anticipated by Yuen is reversed.
The Examiner’s decision to reject claim 13 under 35 U.S.C. § 103(a)
as being unpatentable over Yuen is reversed.
The Examiner’s decision to reject claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Yuen and Sweetser is reversed.
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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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