Ex Parte Hofmayer et al

Patent Trial and Appeal Board

Jan 12, 2018

14796894 (P.T.A.B. Jan. 12, 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.
14/796,894 07/10/2015 Soren Hofmayer 4001.001US3 3813
21186 7590 01/17/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
NAOREEN, NAZIA
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOREN HOFMAYER,
VI ACHE SLAV ZHOLUDEV, IJAD MADISCH,
HORST FICKENSCHER, MICHAEL HAEUSLER,
and ALEX TOLKE
Appeal 2017-008263
Application 14/796,894
Technology Center 2400
Before ELENI MANTIS-MERCADER, ERIC S. FRAHM, and
DENISE M. POTHIER, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
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Application 14/796,894
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 3—21. Claim 2 has been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants disclose and claim a system and method for processing (i)
academic articles as content from users and storing the content in a database
along with user profiles and feedback receive from the users (e.g., a
comment on an article), and (ii) computing reputation rankings for the user
profiles based on the feedback (Spec. 1—5; Abstract (see claims 1 and
16)). Independent claim 1, reproduced below with emphases added, is
illustrative of the claimed subject matter:
1. A method comprising:
receiving content from a plurality of academic users and
storing the content in a database in association with a plurality
of respective academic user profiles, the content
comprising academic articles authored by the users',
receiving feedback from at least some of the users on the
academic articles associated with the user profiles of other
users and storing the feedback in the database in association
with the respective user profiles of the authors of the academic
articles, the feedback comprising at least one of a comment on,
a citation to, or a copy from one of the articles, and
using a processor, executing a series of instructions stored in a
tangible, non-transitory computer memory, the instructions
causing the processor to compute reputation rankings for
the user profiles based at least in part on the feedback,
weighted based on at least one of the reputation ranking,
credentials, publication volume, or user activity of the
respective user from whom the feedback was received.
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REFERENCES and REJECTIONS
The Examiner made the following rejections:
(1) Claims 1 and 3—21 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Final
Act. 2—3; Ans. 3—5. Specifically, the Examiner determines the claims are
directed to the abstract idea of determining reputation rankings for academic
user profiles based on user feedback, which constitutes the organization of
human activity and relationships in the academic field, and the additional
claimed elements in the claims are instructions to implement the idea on a
computer. Final Act. 2—3; Ans. 2—5.
(2) Claims 1 and 3—21 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Work et al. (US 8,010,460 B2; issued Aug. 30, 2011,
hereinafter “Work”).1 Final Act. 3—9; Ans. 5—7.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
We rely on the Examiner’s factual findings and reasoning stated in the
Final Rejection (mailed May 5, 2016, “Final Act.”) 2—9 and Answer (mailed
1 The Examiner rejects the claims of the instant application under 35 U.S.C.
§ 102(b). Final Act. 3. We note the instant application was filed on July 10,
2015, and has a continuation priority filing date of June 26, 2012. See
Amendment to Specification filed on July 10, 2015. Based on Work’s issue
date of August 30, 2011, Work is available as prior art under 35 U.S.C.
§ 102(e), but not 35 U.S.C. § 102(b), since Work’s issue date predates the
instant application’s continuation filing date by less than a year. As neither
party has addressed this issue, we consider this to be harmless error, and
consider the rejection as having been made under 35 U.S.C. § 102(e), and
not 35 U.S.C. § 102(b).
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Mar. 10, 2017 “Ans.”) 2—7. Additional findings of fact and reasoning may
appear in the Analysis below.
ANALYSIS
35 U.S.C. § 101 Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S.Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75—77 (2012), “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. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts” {id.), e.g., to an abstract idea. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 2355—57. If the
claims are not directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step 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. at 2355 (quoting Mayo,
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566 U.S. at 78—9). For claims to pass muster, “at step two, an inventive
concept must be evident in the claims.” RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
The Court acknowledged in Mayo that “all inventions at some level
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
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that in itself is the
abstract idea and merely invoke generic processes and machinery.
Alice Step One
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S.Ct. at 2355. Merely combining several abstract
ideas (such as the organization of human activity in a specific field, like
academic peer review, mathematical algorithms, and/or a fundamental
business practice) does not render the combination any less abstract.
RecogniCorp, 855 F.3d at 1327 (“Adding one abstract idea ... to another
abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas.). We have considered all of Appellants’ arguments (App. Br.
6—11; Reply Br. 2—3), but find them unpersuasive as to error in the rejection.
With regard to the rejection under 35 U.S.C. § 101, Appellants argue
claims 1 and 16 (App. Br. 6—11). Claims 1 and 16 each contain similar
subject matter, namely (i) processing academic articles as content from users
and storing the content in a database along with user profiles and feedback
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receive from the users (e.g., a comment on an article), and (ii) computing
reputation rankings for the user profiles based on the feedback. We select
independent claim 1 as the representative claim for this group, and will
address Appellants’ arguments with respect thereto. 37 C.F.R.
§ 41.37(c)(l)(iv).
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are still patent
ineligible because they are directed to a judicially-recognized exception—
i.e., an abstract idea or combination of abstract ideas. Final Act. 3^4; Ans.
2—5. In particular, the Examiner concludes the claims are directed to the
abstract ideas of: (i) “determining reputation rankings for academic user
profiles based on user feedbacks which is an example of organizing human
activities and relationships” (Final Act. 2); (ii) data transmission and
collection along with the calculation of a mathematical algorithm to
determine a result and determine a rank based on the result (Ans. 2—3); and
(iii) “performing fundamental commercial practices more efficiently” (Ans.
5), such as “improving academic peer reviews by implementing a ranking
system using feedback” (Ans. 4). The Examiner also concludes the
determination of reputation rankings using human interactive platforms as
claimed is performed by “generic hardware elements” that “would be routine
in any computer implementation” (Final Act. 3); therefore the claims amount
to nothing more than the abstract idea itself and are implemented using
generic computer parts or generic computer system. Final Act. 3; see also
Ans. 4. We agree with the Examiner and add the following.
Instead of using a definition of an abstract idea, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
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or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that “a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea.”) As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs, of Texas, LLC v. DirecTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Our reviewing court has said that abstract ideas include the concepts
of collecting data, recognizing certain data within the collected data set, and
storing the data in memory. Content Extraction & Transmission LLC v.
Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014).
Additionally, the collection of information and analysis of information (e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353. Similarly, “collecting, displaying, and
manipulating data” is an abstract idea. Intellectual Ventures I LLC v.
Capital One Financial Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
At least the following decisions from our reviewing court have found
many similar types of fundamental commercial practices patent ineligible:
American Needle, Inc. v. Zazzlelnc., 2016 WL 6647774 (Fed. Cir. 2016)
(mem.) (affirming the district court’s holding that showing merchandise to
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potential customers is patent ineligible.); Cyberfone Sys., LLC v. CNN
Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir. 2014) (affirming the district
court’s holding that using categories to organize, store, and transmit
information is well-established and the idea of collecting information and
then separating and transmitting that information according to its
classification is patent ineligible.); Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343 (Fed. Cir. 2014)(cert.
denied, 136 S.Ct. 119 (2015) (data collection, recognition, and storage is
undisputedly well-known and collecting data, recognizing certain data
within the collected data set, and storing that recognized data in a memory is
patent ineligible.); Concaten, Inc. AmeriTrakFleet Solutions, LLC, 2016
WL 5899749 (Fed. Cir. 2016) (mem.) (cert, denied), 2017 WL 1001313
(2017) (receiving, processing, and transmitting data is patent ineligible.);
Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
(holding that collecting information, analyzing it, and displaying certain
results of the collection and analysis is patent ineligible.). In this light,
Appellants’ method of determining reputation rankings for academic user
profiles based on user feedback recited in claim 1 on appeal is the
organization of human activity, and a commercial practice that is economic
and fundamental in nature.
Our reviewing court has also held that “analyzing information by steps
people [can] go through in their minds, or by mathematical algorithms,
without more [are] mental processes within the abstract-idea category.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016). At least the following decisions from our reviewing court have
found a process of operating on information using mathematical
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formulas/correlations patent ineligible: Digitech Image Techs., LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (process of
organizing information through mathematical correlations.); Digitech
Information Systems, Inc. v. BMW Auto Leasing, LLC, 504 F. App’x 920
(mem.)(Fed. Cir. 2013) (rendering a decision based on data and
mathematical formulas.).
Appellants’ contention (App. Br. 8—10) that the claims are not abstract
because they recite using a specific type of feedback, feedback based about
“academic articles associated with the user profiles” consisting of “a
comment” as recited in claim 1, is not persuasive inasmuch as feedback
consisting of comments still falls within the abstract idea of organizing
human activities and relationships that may improve academic peer reviews.
Appellants’ contentions that the claims are drawn to (i) “a specific
computer-implemented technique” (App. Br. 8) and (ii) an improvement
over prior-art computer technology, similar to the claims in DDR Holdings
(App. Br. 10-11) are also unpersuasive. Appellants misconstrue DDR
Holdings. In DDR Holdings, the court held that a claim may amount to
more than any abstract idea recited in the claims when it addresses and
solves problems only encountered with computer technology and online
transactions, e.g., by providing (serving) a composite web page rather than
adhering to the routine, conventional functioning of Internet hyperlink
protocol. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257—59 (Fed. Cir. 2014). In contrast, claim 1 performs a process that
collects, stores, analyzes, and manipulates information (i.e., feedback
including comments about academic articles) to compute a reputation
ranking using a conventional computer. See Final Ans. 2—3; Spec. ]Hf 1, 5—7,
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21—27; cf. App. Br. 8—11; and Reply Br. 2—3. The collection (i.e., receiving
content and feedback), analysis, and manipulation of academic content and
comments/feedback (i.e., data) to produce rankings are not technical
problems as discussed in DDR; rather, they are ranking and/or efficiency
problems (e.g., whether certain comments for articles associated with certain
user profiles meets certain criteria). Computing reputation rankings for user
profiles based on feedback consisting of comments is a commercial solution
to the ranking/efficiency problem in the academic field, not a technical
solution. This commercial solution may be assisted by using a general
purpose computer to perform the data collection, analysis, and manipulation
processes, but does not arise specifically in the realm of computer
networking or improve how the computer itself functions. As we previously
explained, the instant claims are more akin to the claims for analyzing
information found to be abstract in OIP Techs., 788 F.3d at 1363 or Elec.
Power, 830 F.3d at 1353.
In view of the foregoing, we conclude that claim 1 recites an abstract
idea or a combination of abstract ideas. More specifically, we conclude that
the method for receiving content and feedback, storing content in a database,
and using a processor to compute rankings recited in independent claim 1,
are fundamental business practices employing mathematical algorithms, as
well as the organization of human activity in the academic peer review field,
and, therefore constitute patent-ineligible subject matter. See Alice, 134
S.Ct. at 2357; Bilski v. Kappos, 561 U.S. 593, 611 (2010); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (“[Fundamental
economic and conventional business practices are often found to be abstract
ideas, even if performed on a computer.”)
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Alice Step Two
The Examiner also concludes, and we agree, claim 1 does not include
limitations that are “significantly more” than the abstract idea because the
claims do not include an improvement to another technology or technical
field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment. See Final Act. 3; Ans. 4—5.
Here, we agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. Id.
We agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. See e.g., Final Act. 3; Ans. 4—5. Indeed, the claims
merely recite processes for receiving content and feedback, storing content
in a database, and using a processor to computer rankings (i.e., mathematical
operations). Such steps are routine, conventional, and well-understood
computer functions (i.e., mathematical operations) of a general processor.
The Specification supports this view in discussing the processes
implemented in software, which operates on generic computers to perform
the recited data manipulation steps. See Spec. Tflf 21—27; see also Ans. 4—5
(citing Spec. 120). “[T]he use of generic computer elements like a
microprocessor” to perform conventional computer functions “do not alone
transform an otherwise abstract idea into patent-eligible subject matter.”
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FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (citing DDR Holdings, 773 F.3d at 1256).
Summary
In view of the foregoing, we are not persuaded of Examiner error and
we sustain the Examiner’s rejection under 35 U.S.C. § 101 of representative
claim 1, as well as claims 3—21 grouped therewith.
35 U.S.C. §102
With regard to the anticipation rejection, Appellants argue claims 1
and 3—21 as a group, primarily arguing independent claims 1 and 16 (App.
Br. 12—14). Claims 1 and 16 each contain similar subject matter, namely
processing academic articles as content from users and storing the content in
a database along with user profiles and feedback receive from the users (e.g.,
a comment on an article), and (ii) computing reputation rankings for the user
profiles based on the feedback. We select independent claim 1 as the
representative claim for this group, and will address Appellants’ arguments
with respect thereto. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with the Examiner (Final Act. 3^4; Ans. 5—7) that Work
discloses the disputed limitations of (i) “receiving content from a plurality of
academic users and storing the content in a database in association with a
plurality of respective academic user profiles, the content
comprising academic articles authored by the users” (claim 1); and (ii)
receiving feedback that is equivalent to the recited “comments” required by
claim 1. The Examiner cites column 9, lines 18—24 of Work as meeting
limitation (i) above (see Ans. 5—6), and column 19, line 19 of Work which
discloses “evaluations” or endorsements as meeting the “comment”
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limitation of claims 1 and 16 (see Ans. 6). Work discloses “storing]
reference information along with actual evaluations and endorsements in
electronic database 42 to be associated with users’ profiles and resumes”
(Work col. 9,11. 18—21). Work further discloses that “[tjhese stored
references and endorsements may be used so as to enhance the ability of
searchers to find targets who not only appear to match their search
requirements, but who have also received positive endorsements by others”
(id. at col. 9,11. 21—24), similar to Appellants disclosed and claimed
invention (see Spec. 11 (see claims 1, 16)). Appellants have not rebutted
these findings in the Reply Brief, either by way of evidence or argument, or
otherwise shown these findings to be in error.2
In view of the foregoing, Appellants’ argument that Work fails to
disclose all of the limitations of claims 1 and 16 (App. Br. 12—14), are not
persuasive. Appellants’ arguments have not shown error in the Examiner’s
factual findings related to the anticipation rejection of claims 1 and 16, or
remaining dependent claims 3—15 and 17—20, which are argued for similar
reasons as claims 1 and 16. Accordingly, we sustain the Examiner’s
rejection of representative claim 1, as well as claims 3—21 grouped
therewith, as being anticipated by Work.
2 Notably, Appellants’ Reply Brief only addresses the rejection under 35
U.S.C. § 101, and not the rejection under 35 U.S.C. § 102. See generally
Reply Br. 2-4. Although Appellants assert “the claims are . . . patentable
over the cited art” (Reply Br. 4), this is not a separate argument on the
merits, and in no way responds to the Examiner’s reliance upon column 9,
lines 18—24 of Work.
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CONCLUSION
The Examiner did not err in rejecting claims 1 and 3—21 based upon
(1) claimed patent-ineligible subject matter under 35 U.S.C. § 101, and (2)
obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
1 and 3-21 under 35 U.S.C. §§ 101 and 103.
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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