Ex Parte Hurwitz et al

Patent Trial and Appeal Board

Sep 29, 2017

13762942 (P.T.A.B. Sep. 29, 2017)

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.
13/762,942 02/08/2013 Joshua B. Hurwitz CS40289 1055
43471 7590 10/03/2017
ARRTS2 F.ntp.mrisp.s T ! C
EXAMINER
Legal Dept - Docketing
101 Tournament Drive
GUIRGUIS, MICHAEL M
HORSHAM, PA 19044 ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
arris. docketing @ arris .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA B. HURWITZ, ZHI FU, and
DOUGLAS A. KUHLMAN
Appeal 2017-005830
Application 13/762,9421
Technology Center 2400
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
JESSICA C. KAISER, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—10, 12—18, and 20, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 11 and 19
have been cancelled.
We AFFIRM.
1 According to Appellants, the real party in interest is ARRIS Enterprises
(App. Br. 3).
Appeal 2017-005830
Application 13/762,942
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to determining
whether information to be transmitted contains sensitive information, and if
so, warning that the transmission contains sensitive information (Abstract).
Claim 1, reproduced below, is exemplary of the claimed subject matter:
1. A method comprising:
extracting, by a computer system, a plurality of terms from
a plurality of documents for a plurality of profiles, wherein each
profile in the plurality of profiles is associated with a particular
user in a plurality of users using a network of electronics devices;
generating, by the computer system, for the plurality of
terms in each of the plurality of profiles, a plurality of associated
inferred meanings based on a plurality of usages of the plurality
of terms in the plurality of documents;
generating for each profile in the plurality of profiles, by
the computer system, a plurality of categorical terms based on
the plurality of inferred meanings, wherein the plurality of
categorical terms categorize the plurality of terms based on the
associated inferred meanings;
generating, by the computer system, a plurality of
associated categorical term frequencies based on a plurality of
associated frequencies of term occurrences of terms associated
with the categorical terms in each of the plurality of profiles,
wherein each of the plurality of associated categorical term
frequencies is associated with one of the plurality of categorical
terms;
determining, by the computer system, a plurality of
sensitivity level values for the plurality of categorical terms
based on the plurality of associated categorical term frequencies;
and
storing, by the computer system, the plurality of sensitivity
level values for the plurality of categorical terms, wherein the
plurality of sensitivity level values are used to analyze whether
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an information transaction comprising at least one of the plurality
of terms is permitted.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gilmour US 2007/0112845 A1 May 17, 2007
Shuster US 2009/0210504 A1 Aug. 20,2009
Warrington US 2010/0229246 A1 Sept. 9, 2010
REJECTIONS
Claims 1—10, 12—18, and 20 stand rejected under 35 U.S.C. § 101 as
being as being directed to ineligible subject matter (Final Act. 6).
Claims 1, 2, 7—10, 12—18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gilmour and Shuster (id. at 7—15).
Claims 3—6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gilmour, Shuster, and Warrington (id. at 15—17).
ISSUE 1
35 U.S.C. § 101: Claims 1—10, 12—18, and20
Appellants argue their invention as recited in claims 1—10, 12—18, and
20 is directed to eligible subject matter (App. Br. 7—8). The issue presented
by the argument is:
Issue 1: Has the Examiner erred in concluding the invention as
recited is directed to ineligible subject matter?
ANALYSIS
In Alice, the Supreme Court set forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
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abstract ideas from those that claim patent-eligible applications of those
concepts” (Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 71—73 (2012))). The first step in the analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
and if so, the second step in the analysis considers the elements of the claims
“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. (quoting Mayo, 566 U.S. at 78)).
First Step
Appellants contend the Examiner erred in concluding the invention, as
recited in claims 1—10, 12—18, and 20, is directed to an abstract idea (Reply
Br. 2; App. Br. 7—8). Specifically, Appellants note the Examiner determines
the invention is directed to “secret document classification,” but they argue
the “claims do not include a limitation or a step that expressly recites
‘document classification’ or ‘secret document classification’” (App. Br. 7—
8). Appellants contend “the ‘claimed invention’ as a whole” is not directed
to an abstract idea (Reply Br. 2 (emphasis omitted)) and the “claims are not
classified in the area of business methods or financial systems” (App. Br. 7).
We are not persuaded. We agree with the Examiner that the claims
are directed to “secret document classification” (Final Act. 6) — i.e.,
classifying a document’s secrecy — to determine whether transmission of
the classified document is permitted (Ans. 18—19). Indeed, the Specification
describes “determining and managing the distribution of sensitive
information” (Spec. 116) by, for example, “determin[ing] that a proposed
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email with an attached text file, includes one or more terms in the body of
the email message or in the contents of the text file that are associated with
one or more categorical terms determined to be highly sensitive” {id. 129;
see id. 1 53, Abstract).
Appellants’ argument that the claims are not directed to secret
document classification because the claims do not “expressly recite[]
‘document classification’ or ‘secret document classification’” (App. Br. 7—
8), is not persuasive. The claims recite “determining ... a plurality of
sensitivity level values.” The Specification teaches a “sensitivity level can
be represented by a classification, such as ‘top-secret,’ ‘confidential,’ ‘non-
secret[,’] etc.” (Spec. 1 56). Accordingly, determining sensitivity levels
includes classifying a document’s secrecy level.
Further, Appellants’ argument that the claimed invention “as a whole”
is not directed to an abstract idea (Reply Br. 2) is without elaboration and is
accordingly, unpersuasive. In particular, Appellants do not present any
arguments addressing which particular claimed features the Examiner fails
to consider in determining the claims are directed to classifying secrecy
levels.
Additionally, Appellants’ argument that the “claims are not classified
in the area of business methods or financial systems” (App. Br. 7) is not
persuasive. Initially, as the Examiner states, “the classification of patent
applications is not part of the legal process for determining subject matter
eligibility”; rather, “the main purpose of classification is to facilitate the
retrieval of patent documents” (Ans. 16—17). That is, the classification of
the instant application is not persuasive evidence that the claimed invention
is directed to patent-eligible subject matter.
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Furthermore, even if the claims are not directed to a business method
or financial system, abstract ideas are not exclusively found in business
methods or financial systems. Indeed, our reviewing court has held that
classifying information and acting based on that classification is an abstract
idea (Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 Fed. Appx.
988, 992 (Fed. Cir. 2014) (“using categories to organize, store, and transmit
information” is a “well-established” abstract idea); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass ’n, 116 F.3d 1343, 1347
(Fed. Cir. 2014) (the “concept of data collection, recognition, and storage is
undisputedly well-known”); Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1313 (Fed. Cir. 2016) (“receiving e-mail (and other data file)
identifiers, characterizing e-mail based on the identifiers, and
communicating the characterization—in other words, filtering files/e-mail—
is an abstract idea”)). Like Cyberfone, Content Extraction, and. Intellectual
Ventures, the claims here are directed to the abstract idea of collecting data
(“extracting ... a plurality of terms”), categorizing data (“categorize the
plurality of terms”), and classifying/organizing data (“determine ... a
plurality of sensitivity levels values for the plurality of categorical terms”) to
provide some function based on that classification (“the plurality of
sensitivity level values are used to analyze whether an information
transaction ... is permitted”).
Second Step
Appellants contend the Examiner erred in concluding the invention as
recited in claims 1—10, 12—18, and 20 does not recite significantly more than
an abstract idea (Reply Br. 2—3; App. Br. 7). Specifically, Appellants argue
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the claims are “patent-eligible under a proper Step 2 analysis . . . because the
specific arrangement of features in the claim[s] improve[] a technological
process” (Reply Br. 2—3 (citations omitted); App. Br. 7).
Appellants’ arguments that the claims “improve[] a technological
process,” thereby transforming the abstract idea into a patent-eligible
application of the abstract idea (Reply Br. 2—3; App. Br. 7), are not
persuasive. The claims do not describe any specific improvement to a
particular technological process, e.g., computer functionality. Rather, they
describe the use of a conventional or generic computing system to
implement the abstract idea discussed supra (Ans. 18).
Furthermore, although Appellants argue “employing a mathematical
formula does not render a claimed method unpatentable” (App. Br. 7), the
claim language does not specify any particular mathematical formula or
specific algorithm used to implement the abstract idea. Instead, the claim
recites broad and generic steps for performing the abstract idea. For
example, the claim recites “determining ... a plurality of sensitivity level[s]
. . . based on the plurality of. . . term frequencies,” broadly preempting all
manners of determining document sensitivity based on how often a term is
used in the document.
Additionally, we are not persuaded any of the limitations in the
dependent claims provide a meaningful limitation that transforms the claim
into a patent eligible application, nor have Appellants proffered evidence or
argument to persuade us of such a meaningful limitation (see App. Br. 7—8;
see also Reply Br. 2—3). Accordingly, the Examiner did not err in
concluding the invention as recited in claims 1—10, 12—18, and 20 is directed
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to patent-ineligible subject matter. Therefore, we sustain the Examiner’s
rejection of claims 1—10, 12—18, and 20 under 35 U.S.C. § 101.
ISSUE 2
35 U.S.C. § 103(a): Claims 1—10, 12—18, and20
Appellants contend their invention as recited in independent claims 1,
12, and 20, is patentable over Gilmour and Shuster (App. Br. 8—14).2 The
issues presented by the arguments are:
Issue 2a: Has the Examiner shown the combination of Gilmour and
Shuster teaches or suggests “the plurality of categorical terms categorize the
plurality of terms based on the associated inferred meanings,” as recited in
claim 1 and similarly recited in claim 20?
Issue 2b: Has the Examiner shown the combination of Gilmour and
Shuster teaches or suggests “wherein the plurality of sensitivity level values
are used to analyze whether an information transaction comprising at least
one of the plurality of terms is permitted,” as recited in claim 1 and similarly
recited in claims 12 and 20?
Issue 2c: Did the Examiner improperly combine Gilmour and
Shuster?
2 Rather than repeat the arguments here, we refer to the Appeal Brief and
Reply Brief for the positions of Appellants and the Final Office Action and
Answer for the positions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2012).
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ANALYSIS
Issue 2a
Appellants contend the Examiner erred in finding Gilmour teaches or
suggests “the plurality of categorical terms categorize the plurality of terms
based on the associated inferred meanings,” as recited in claim 1 and
similarly recited in claim 20 (App. Br. 8—11). Specifically, Appellants argue
Gilmour’s “term table” does not “rely upon any meaning of the terms, either
inferred meaning or syntactic meaning, as a basis for assigning its term
identifiers” {id. at 9-10). Appellants further argue Gilmour “[c]onvert[s]
‘noun phrases’ to a ‘canonical form’ . . . rather than as categorizing terms
based on their meaning” {id. at 10). Additionally, Appellants argue
Gilmour’s “‘candidates for knowledge terms,’ clearly indicate^ that
Gilmour’s term extractor is unable to know whether an extracted noun­
phrase is an actual knowledge term” and cannot “mak[e] such a
determination based on the meaning of a candidate term” {id.).
We are not persuaded by Appellants’ contentions. The Examiner
finds (Final Act. 8), and we agree, Gilmour teaches “terms and associated
information are extracted from the electronic document” (Gilmour 1100; see
id. 63—64). The Examiner further finds (Final Act. 8), and we agree, the
associated information for respective terms is determined based on “the part
of speech that each word within the document constitutes, and a word type
(e.g., whether the word is a lexicon term)” (Gilmour 1100; see id. 11 63—64,
102, 106—107). The Examiner further finds, and we agree, Gilmour teaches
“determining a category for the terms based on” the associated information,
“such as part of speech and type indication” (Ans. 20 (citing Gilmour
11 106-107); see Gilmour 1109).
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Appellants’ arguments that Gilmour’s term table and canonical form
conversion do not categorize terms based on the terms’ meaning (App. Br.
9-10), do not persuasively address the Examiner’s findings that Gilmour
uses “associated information” to categorize terms based on the terms’
meaning. Specifically, Appellants do not address the Examiner’s finding
(Final Act. 8; Ans. 20) that associated information, i.e., “associated inferred
meaning,” is respectively determined for extracted terms. In Gilmour,
associated information includes “[a] Part of Speech indication indicating the
parts of speech that words included within the term comprise (e.g., nouns,
verbs, adjectives, or adverbs)” and “[a] Type indication indicating whether
the term comprises a universal lexicon term, an environment lexicon term, or
is of unknown grammatical structure” (Gilmour || 100, 102, 106—107).
Gilmour explains “within a manufacturing environment, the collection of
environment lexicon terms will clearly differ from the lexicon terms within
an accounting environment” (Gilmour |100).
Gilmour uses that associated information to categorize an extracted
term. For example, “a type ‘P’ indication identifies an environment lexicon
term, a type ‘L’ indication identifies a universal lexicon term, and a type ‘U’
indication identifies a term of unknown grammatical structure for a given
length,” and “the ‘A’ indication identifies the adjectives, the ‘V’ indication
identifies a verb, the ‘N’ indication identifies a noun, and the ‘X’ indication
identifies an unknown part of speech” (Gilmour 1109).
Appellants’ argument that Gilmour’s knowledge terms are
“candidate” knowledge terms rather than “actual” knowledge terms (App.
Br. 10) is not commensurate with the scope of the claim. In particular,
Appellants’ arguments are directed to Gilmour’s “candidate knowledge
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terms” and do not address the Examiner’s findings regarding Gilmour’s
extracted terms, discussed supra. Further, the claims do not require that
terms are determined with any level of certainty. Nor does the Specification
define explicitly or describe how terms are determined with any level of
certainty. As such, Gilmour’s extracted terms teach “categorical terms,” as
recited in claim 1, and similarly recited in claim 20.
Accordingly, we are not persuaded the Examiner fails to show the
combination of Gilmour and Shuster teaches or suggests “the plurality of
categorical terms categorize the plurality of terms based on the associated
inferred meanings,” as recited in claim 1 and similarly recited in claim 20.
Additionally, relying on the same arguments as claim 1, Appellants
argue Gilmour does not teach “a plurality of categorical terms that
categorize the plurality of terms based on syntactic meanings of the plurality
of terms,” as recited in claim 12 (see App. Br. 8—11). As discussed supra,
Appellants’ arguments do not persuade us that categorizing terms by the
terms’ part of speech or word type does not categorize terms based on the
terms’ “syntactic meanings.” In particular, Appellants’ arguments do not
persuasively address the Examiner’s finding that the part of speech
information, i.e., the grammatical components of speech such as “nouns,
verbs, adjectives, or adverbs,” for a term, is extracted (Gilmour 1106).
Those grammatical components of speech are associated with the “syntactic
meaning” of a term and are categorized on that basis (Gilmour 1109).
Accordingly, we are not persuaded the Examiner fails to show the
combination of Gilmour and Shuster teaches or suggests “the plurality of
categorical terms categorize the plurality of terms based on the associated
inferred meanings,” as recited in claim 12.
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Issue 2b
Appellants contend the Examiner erred in finding Shuster teaches or
suggests “the plurality of sensitivity level values are used to analyze whether
an information transaction comprising at least one of the plurality of terms is
permitted,” as recited in claim 1 and similarly recited in claims 12 and 20
(App. Br. 11). Specifically, Appellants argue “Shuster merely creates a
warning that may be based in part on sensitivity, and Shuster then teaches
relying instead on a human user’s intervention and judgment in deciding
whether or not to complete the transaction,” rather than determining whether
an information transaction is allowable or permitted (id.).
We are not persuaded by Appellants’ contentions. The Examiner
finds (Ans. 22—23; Final Act. 9), and we agree, Shuster teaches a system that
“determines that user confirmation is required” before sending out a
sensitive email (Shuster 130). For example, Shuster “identif[ies] and
display[s] to the client’s user one or more reasons why a[n] [email]
addressee is identified as questionable, and wam[s] ... the user that she may
be sending a message to an unintended recipient” (id.).
Appellants’ argument that Shuster provides a transaction warning
rather than determining whether a transaction is allowable or permitted
(App. Br. 11) is not persuasive. We agree with the Examiner that Shuster’s
warning “prevents] [a] message from being further sent/transmitted since
the message cannot be transmitted . . . until a response to the warning is
provided” (Ans. 22—23). That is, Shuster’s warning system determines that,
without user confirmation, message transmission is not permitted or allowed
because of the message’s sensitivity. Accordingly, we are not persuaded the
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Examiner fails to show the combination of Gilmour and Shuster teaches or
suggests “the plurality of sensitivity level values are used to analyze whether
an information transaction comprising at least one of the plurality of terms is
permitted,” as recited in claim 1 and similarly recited in claims 12 and 20.
Issue 2c
Appellants contend the Examiner improperly combined Gilmour and
Shuster (App. Br. 11—14). Specifically, Appellants argue “the proposed
combination of Gilmour and Shuster would frustrate the purposes of
Gilmour, and would require a change to the principle of operation of
Gilmour” because “Gilmour teaches adding recipients with whom an email
document can be shared” while “Shuster, to the contrary, teaches techniques
for limiting sharing of email” {id. at 12—13).
We are not persuaded. As discussed supra, we agree with the
Examiner’s finding that Gilmour teaches analyzing a message for its content
(Ans. 20; Final Act. 8 (citing Gilmour 1100); see Gilmour || 63—64, 102,
106—107). Further, as discussed supra, we agree with the Examiner’s
finding that Shuster teaches a warning system that determines the sensitivity
level of an email and warns users before transmitting sensitive emails (Final
Act. 9 (citing Shuster || 28, 30); Ans. 22—23). We agree with the
Examiner’s conclusion that it would have been obvious to incorporate
Shuster’s warning system into Gilmour’s message analysis system to prevent
“erroneously sending a sensitive message” (Final Act. 10) (emphasis
omitted).
Appellants’ arguments that the combination frustrates or changes the
principle of operation of Gilmour (App. Br. 12—13) are not persuasive.
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Although Gilmour teaches “suggesting] potential recipients for an e-mail
message based on the content thereof,” that feature “operates independently
of the profiling system,” which the Examiner relies on to analyze electronic
documents (Gilmour |130 (emphasis added)). Appellants’ suggested
combination improperly requires the bodily incorporation of embodiments
and features in Gilmour that the Examiner’s combination does not make —
specifically, Gilmour’s “Suggested Recipients” feature. Moreover,
suggesting a “list of potential recipients who may be interested in receiving
the e-mail” (id.) is not incongruent with “wam[ing] . . . the user that she may
be sending a message to an unintended recipient” (Shuster 130). Warning
that some email recipients may be inappropriate recipients does not prevent
or otherwise frustrate suggesting other appropriate email recipients.
Accordingly, we are not persuaded the Examiner improperly combined
Gilmour and Shuster.
Therefore, we sustain the rejection of independent claims 1,12, and
20 under 35 U.S.C. § 103(a) as being unpatentable over Gilmour and
Shuster. We also sustain the Examiner’s rejections under 35 U.S.C. § 103(a)
of dependent claims 2—10 and 13—18, for which Appellants have not
presented separate arguments. See App. Br. 8—14.
DECISION
The Examiner’s rejection of claims 1—10, 12—18, and 20 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter is affirmed.
The Examiner’s rejection of claims 1, 2, 7—10, 12—18, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Gilmour and Shuster is
affirmed.
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The Examiner’s rejection of claims 3—6 under 35 U.S.C. § 103(a) as
being unpatentable over Gilmour, Shuster, and Warrington is affirmed.
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.
§ 41.50(f).
AFFIRMED
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