Ex Parte Koll et al

Patent Trial and Appeal Board

Oct 13, 2017

13896684 (P.T.A.B. Oct. 13, 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.
13/896,684 05/17/2013 Detlef Koll M0002-1032C1 3808
144359 7590 10/17/2017
Rlnechift TP T T C EXAMINER
1 Broadway, 14th Floor
Cambridge, MA 02142
SHAAWAT, MUSSA A
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
10/17/2017 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):
mail@blueshiftip.com
eofficeaction @ appcoll.com
docketing@blueshiftip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DETLEF KOLL and THOMAS POLZIN
(Applicant: MMODAL IP LLC)
Appeal 2016-001487
Application 13/896,684
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Detlef Koll and Thomas Polzin (Appellants) seeks review under
35 U.S.C. § 134 of a final rejection of claims 2—11, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’s Appeal Brief (“Br.,”
filed July 6, 2015) and the Examiner’s Answer (“Ans.,” mailed September
10, 2015), and Final Action (“Final Act.,” mailed January 7, 2015).
Appeal 2016-001487
Application 13/896,684
The Appellants invented techniques for improving the accuracy of
billing codes and other data generated by automated inference engines.
Specification para. 7.
An understanding of the invention can be derived from a reading of
exemplary claim 2, which is reproduced below (bracketed matter and some
paragraphing added).
2. A method performed by at least one computer processor
executing computer program instructions tangibly stored on at
least one non—transitory computer—readable medium,
the method for use with a system including a data source
and a billing code,
the method comprising using the at least one computer
processor to perform operations of:
(A) receiving,
by a billing code feedback module executed by the
at least one computer processor,
input from a user,
wherein the input represents a verification status of the
billing code;
(B) applying,
by the billing code feedback module,
first inverse logic to the input, the billing code, and a set
of forward logic,
to identify first and second concept extraction
components, wherein (B) comprises:
(B) (1) identifying,
by the billing code feedback module,
a first logic component that generated the billing code,
wherein the first logic component comprises means for
implementing first logic, wherein the first logic includes
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a first condition, wherein the first condition includes a
first sub-condition and a second sub—condition;
and
(B) (2) applying,
by the billing code feedback module,
first inverse logic to the input received from the user to
identify at least one of the first and second sub-
conditions;
and
(C) applying,
by the billing code feedback module,
reinforcement to the first and second concept extraction
components, comprising:
(C) (1) determining,
by the billing code feedback module,
whether the verification status indicates that the billing
code is accurate;
and
(C) (2) if the verification status indicates that the first sub­
component is responsible for an inaccuracy of the billing code,
then applying,
by the billing code feedback module,
negative reinforcement to the first sub—component.
Claims 2—11 stand rejected under 35U.S.C. § 101 as directed to non—
statutory subject matter.
Claims 2—11 stand rejected under the judicially created doctrine of
obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent.
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ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “billing
code.”
02. The disclosure contains no lexicographic definition of “inverse
logic.”
03. The disclosure contains no lexicographic definition of “concept
extraction component.”
04. The disclosure contains no lexicographic definition of
“reinforcement.”
05. The disclosure contains no lexicographic definition of
“verification status.”
06. “Applying reinforcement” is associating reinforcement. Spec,
para. 79.
Facts Related to Appellants ’ Disclosure
07. Billing codes need to be generated and provided to an insurer
for reimbursement. Spec. para. 4.
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08. Each of the forward logic components 132a—c may implement a
distinct symbolic rule for generating or selecting billing codes
based on information derived from the draft transcript. Each such
rule includes a condition (also referred to herein as a premise) and
a conclusion. Spec. para. 46.
09. The symbolic rules represented by the forward logic
components 132a—c may be adjusted manually. Para. 48.
10. Links 134a—b may or may not be generated and/or stored as
elements of the system. For example, links 134a—b may be stored
within data structures in the system, such as in data structures
within the set of billing codes. For example, each of the billing
codes may contain data identifying the forward logic component
concept content (or part thereof) that caused the billing code to be
generated. Spec. para. 63.
11. A human reviewer may conclude that a billing code is
inaccurate as a result of a concept extraction component
incorrectly encoding text with a concept code. Spec, para 69.
12. The system also includes a billing code feedback module.
Once a human reviewer has determined whether a particular
billing code is accurate, the reviewer provides input representing
that determination to a billing code feedback module. In general,
this input represents a verification status of the reviewed billing
code, where the verification status may have a value selected from
a set of permissible values, such as "accurate" and "inaccurate" or
"true" and "false." Spec. para. 70.
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13. The billing code feedback module may associate a truth value
with the identified forward logic component. For example, if the
reviewer's feedback confirms the reviewed billing code, then the
billing code feedback module may associate a truth value of "true"
with the identified forward logic component; if the reviewer's
feedback disconfirms the reviewed billing code, then the billing
code feedback module may associate a truth value of "false" with
the identified forward logic component. The billing code
feedback module may, for example, store such a truth value in or
in association with the corresponding forward logic component.
Spec. para. 74.
14. The system may identify the concept extraction component
responsible for generating the billing code by, for example,
following the series of links from the billing code back to the
corresponding forward logic component. For example, if the
reviewer provides feedback on billing code 142b, then the
feedback module may identify the concept extraction component
120b as the concept extraction component that generated billing
code 142b by following the link 144b from billing code 142b to
forward logic component 132b, by following the link 134b from
the forward logic component 132b to the concept content 122b,
and by following the link 124b from the concept content 122b to
the concept extraction component 120b. It is not necessary to use
links to identify the concept extraction component responsible for
generating a billing code. Instead, inverse logic may be applied to
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Application 13/896,684
identify the responsible concept extraction component without the
use of links. Spec. para. 75.
15. A forward logic component may represent logic having
multiple clauses (sub-conditions). For example, consider a
forward logic component that implements a rule of the form “if A
AND B, Then C.” Such a rule contains two clauses (sub-
conditions): A and B. In the description herein, each such clause is
said to correspond to and be implemented by a “sub—component”
of the forward logic component that implements the rule
containing the clauses. Spec. para. 77.
16. Each sub—component of a forward logic component may
correspond to and implement a distinct clause (sub-condition) of
the logic represented by the forward logic component. Spec. para.
78.
17. Associating reinforcement with a component is also referred to
herein as "applying" reinforcement to the component. Spec. para.
79.
18. Both praise and blame are examples of "reinforcement" as that
term is used herein. Therefore, in general the billing code
feedback module may generate reinforcement output, representing
praise and/or blame. Such reinforcement output may take any of a
variety of forms. For example, a score, referred to herein as a
"reliability score," may be associated with each of one or more
components. The reliability score of a particular component
represents an estimate of the degree to which the particular
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component reliably generates accurate output. Assume for
purposes of example that the value of a reliability score may be a
real number that ranges from 0 (representing complete
unreliability) to 1 (representing complete reliability). The
reliability score associated with each particular component may be
initialized to some initial value, such as 0, 1, or 0.5. Spec. para.
81.
19. Inverse reasoning module 630 includes inverse logic
components, each of which may be implemented in any of the
ways disclosed in connection with forward logic components of
reasoning module 130. Each of the inverse logic components may
implement distinct logic for reasoning backwards over the set of
logic (e.g., set of rules) represented and implemented by the
reasoning module as a whole. The set of logic represented and
implemented by the reasoning module as a whole will be referred
to herein as the "rule set" of the reasoning module, although it
should be understood more generally that the reasoning module
may implement logic in addition to or other than rules, and that
the term "rule set" refers generally herein to any such logic. Spec,
para. 96.
20. Each of the inverse logic components may contain both a
confirmatory logic component and a disconfirmatory logic
component, both of which may be implemented in any of the ways
disclosed above in connection with forward logic components of
the reasoning module. Spec. para. 98.
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ANALYSIS
Claims 2—11 rejected under 35 U.S.C. § 101 as directed to non—statutory
subject matter
Claim 2 recites many phrases that are not conventional or terms of art,
and so we begin by construing the claim.
A billing code is undefined, but the Specification indicates they are
codes provided to insurers for reimbursement. Thus, billing codes are codes
indicating a reason for billing.
Forward logic and inverse logic are undefined, but the Specification
indicates they are inferential logic applied to rules of the form
premise—^conclusion, i.e. conventional if—then—else logic. Forward logic
derives the conclusion from the premise, and inverse logic derives the set of
premises from the conclusion.
Concept extraction components are undefined but the Specification
indicates they are what is responsible for generating billing codes. Thus,
they are the actors that carry the results from applying forward logic. As
forward and inverse logic components are the inferential processes and
repositories of the rules for such forward and inverse logic, a logic
component that generated the billing code is then the process and repository
of the rules whose output is used by the actor in generating the billing code.
Reinforcement is undefined but the Specification provides attributes of
“blame” and “praise” as examples. Applying reinforcement is defined as
associating reinforcement. So applying reinforcement is associating some
reinforcing attribute in any manner.
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Verification status is undefined but the Specification provides attributes
of “true” and “false” as examples.
Means for implementing first logic is drafted as means plus function.
Appellants direct us to Specification paragraphs 77—78. App. Br. 11. These
paragraphs describe how a logical AND operator is implemented by
referring to each operand of the AND operation as a separate sub­
component.
Accordingly, claim 2 is then:
2. A method performed by at least one computer processor
executing computer program instructions tangibly stored on at
least one non—transitory computer—readable medium,
the method for use with a system including a data source
and a billing code,
the method comprising using the at least one computer
processor to perform operations of:
(A) receiving,
by computer processor,
input representing a billing code verification attribute
from a user,
(B) applying,
by the billing code feedback module,
first inverse inferential logic to the input, the billing code,
and a set of forward logic rules,
to identify first and second actors which previously
applied those rules, wherein (B) comprises:
(B) (1) identifying,
by the billing code feedback module,
a first process and logic rules repository that generated
the billing code,
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wherein the first rules repository comprises inferential
rules for implementing first logic,
wherein the first logic includes a first condition,
wherein the first condition includes a first sub—condition
and a second sub— condition that are logically connected
by an AND operation;
and
(B) (2) applying,
by the billing code feedback module,
first inverse inferential logic to the input received from
the user to identify at least one of the first and second
sub-conditions;
and
(C) associating,
by the billing code feedback module,
a reinforcement attribute to the first and second actors
which previously applied those rules, comprising:
(C) (1) determining,
by the billing code feedback module,
whether the verification status indicates that the billing
code is accurate;
and
(C) (2) if the verification status indicates that the first sub­
component is responsible for an inaccuracy of the billing code,
then associating, by the billing code feedback module, a
negative reinforcement attribute to the first sub­
component.
In other words, (A) get a billing code verification attribute; (B) identify
what concepts led to that billing code by identifying where the rules leading
to that concept came from and then identifying two conditions in those rules
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that led to the inference resulting in the billing code, and then (C)
associating some reinforcement attribute to where those rules came from by
determining whether the billing code is indicated as accurate and if a rule is
indicated as inaccurate, associate a negative value to the reinforcement
attribute of the rule. As such this is little more than conceptual advice.
The Supreme Court
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. First, []
determine whether the claims at issue are directed to one of
those patent—ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] 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. [The Court] 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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S.Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to applying rules to documents to generate codes, which is a
fundamental economic practice or advice on how to practice business. Final
Act. 4.
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While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claim 2 recites that it is a method for use with a system
including a data source and a billing code. The steps in claim 2 result in
determining whether a code is accurate, and if not, then making some
negative association with the code. The Specification at paragraph 7 recites
that the invention relates to improving the accuracy of billing codes and
other data. Thus, all this evidence shows that claim 2 is directed to making
data more accurate, i.e. proofreading.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of
proofreading is a fundamental business and legal practice long prevalent in
our system of commerce. The use of proofreading is also a building block of
making contractual arrangements. Thus, proofreading, like hedging, is an
“abstract idea” beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of
proofreading at issue here. Both are squarely within the realm of “abstract
ideas” as the Court has used that term. See Alice Corp. Pty. Lid. at 2357.
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The remaining claims merely describe inferences to be drawn. We
conclude that the claims at issue are directed to a patent—ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent—ineligible abstract idea into a patent—eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to read data and perform inferential logic amounts to electronic
data query and retrieval—one of the most basic functions of a computer. All
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of these computer functions are well—understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appeallants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appeallants’ method claims
simply recite the concept of proofreading as performed by a generic
computer. The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than an instruction to apply the abstract idea of
proofreading using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd. at 2360.
We are not persuaded by Appeallants’ argument that the record as a
whole suggests that it is more likely than not that the claimed invention
would be considered a practical application of an abstract idea. App. Br. 17.
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Claim 2 is no more than abstract conceptual advice to follow inferential
rules to verily a code.
We are not persuaded by Appellants’ argument that the Examiner merely
states his conclusion that the claims are directed to nothing significantly
more than an abstract idea, without relying on any evidence in the record.
App. Br. 18. We find supra that the claims and Specification provide
substantial evidence that the claims are directed to a form of proofreading.
We are not persuaded by Appellants’ argument that the method of claim
2 goes significantly beyond the mere abstract idea. App. Br. 18—21.
Appellant recite the claim limitations and conclude based only on that
recitation that the claim goes significantly beyond the mere abstract idea.
Appellants go on to contend that limitation (B)(2) is neither contained within
nor suggested by the abstract idea the claim is drawn toward. Id. But
limitation (B)(2) is abstract conceptual advice to look up one of the
conditions leading to a code with inverse inferential logic, with the
admonishment to automate it.
We are not persuaded by Appellants' argument that the express claim
limitations go significantly beyond an instruction to implement the abstract
idea of applying rules to billing documents to generate codes on a computer.
App. Br. 21. Appellants contend that claim 2 includes a variety of express
limitations which are nowhere to be found in or suggested by the Examiner's
asserted abstract idea. Id. at 22. Appellants conflate the Alice steps. The
first step asks what the claim is directed to and whether that is an abstract
idea. It is the second step that looks at the limitations and how they are
organized and the claim as a whole with those limitations. The added
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limitations are no more than conceptual advice on inferences to be made
based on rules. The fact that there are a number of such inferences to be
made and that the claim recites various labels for the rules, data, and who
performs the inferences, does not convert the abstract conceptual advice into
more than that.
We are not persuaded by Appellants' argument that the Examiner has
failed to demonstrate, or even to point to any evidence suggesting, that the
express limitations of claim 2 recite "conventional activities previously
known to the pertinent industry." Appellants contend that demonstrating that
claim 2 is limited to "conventional activities previously known to the
pertinent industry" would require, at the very least, pointing to some
reference or combination of references proving that the express limitations
of claim 2 were previously known to the pertinent industry. App. Br. 22—23.
One of ordinary skill in the art would have the equivalent of a degree in
computer science, which generally includes courses in digital logic, which in
turn include inferential logic. As the limitations are no more than abstract
advice to perform inferential logic, this would be necessarily known to those
of ordinary skill.
We are not persuaded by Appellants' argument that there is nothing
"generic" about the express elements of claim 2. These elements are
specific, not generic. App. Br. 23. This is a conclusory argument. It
appears Appellants are referring to their labels for the data and software
modules as adding specificity, but merely labelling parts of abstract advice
does not add to specificity.
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Appellants further argue that the asserted claims are akin to the
claims found patent—eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Court evaluated the
eligibility of claims “address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host’s website after ‘clicking’ on an advertisement and activating a
hyperlink.” Id. at 1257. There, the Court found that the claims were patent
eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no “pre—Internet
analog.” Id. at 1258. The Court cautioned, however, “that not all claims
purporting to address Internet—centric challenges are eligible for patent.”
Id. For example, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent—ineligible in
Ultramercial. See id. at 1258—59 (citing Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715—16 (Fed. Cir. 2014)). As noted there, the Ultramercial
claims were “directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715—16).
Nevertheless, those claims were patent ineligible because they “merely
recite[d] the abstract idea of ‘offering media content in exchange for
viewing an advertisement,’ along with ‘routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Appellants’ asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
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The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellants’ asserted claims recite
receiving data and making basic if—then—else types of inferences. This is
precisely the type of Internet activity found ineligible in Ultramercial.
Claims 2—11 rejected under the judicially created doctrine of obviousness
type double patenting as claiming the patentably indistinguishable subject
matter as another U.S. Patent
We summarily affirm this uncontested rejection. Although Appellants
filed a terminal disclaimer on February 12, 2015, the Examiner has neither
withdrawn the rejection nor indicated whether the disclaimer is proper.
CONCLUSIONS OF LAW
The rejection of claims 2—11 under 35 U.S.C. § 101 as directed to non—
statutory subject matter is proper.
The rejection of claims 2—11 under the judicially created doctrine of
obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent is proper.
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DECISION
The rejection of claims 2—11 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.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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