Ex Parte Maxwell et al

Patent Trial and Appeal Board

Sep 7, 2017

13168874 (P.T.A.B. Sep. 7, 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.
13/168,874 06/24/2011 Mark W. Maxwell 28470-18472 1894
758 7590 09/11/2017
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/11/2017 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):
PTOC @Fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK W. MAXWELL, VICKI C. MAR,
STEVEN M. FOGEL, TEERY D. HOWELL,
CHRIS R. KOSMAKOS, and DOUGLASS MATTHEWS
Appeal 2016-005522
Application 13/168,874
Technology Center 3600
Before JOSEPH L. DIXON, ERIC S. FRAHM, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005522
Application 13/168,874
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—7, 9—20, 22—33, and 35—39, which constitute all
the claims pending in this application. Claims 8, 21, and 34 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A computer-implemented method, computer medium, and system for
translating a military occupation specialty (MOS) code to a civilian
occupation. Spec. 1—3; Abs.; independent claims 1, 14, and 27. Claim 1,
reproduced below with lettered bracketing, emphases, and
formatting/paragraphing added, is illustrative of the claimed subject matter:
1. A computer-implemented method for translating a
military occupation specialty (MOS) code to a civilian
occupation for a user, comprising:
storing in a computer system, records for each of a
plurality of military occupations, each record identifying a MOS
code and a plurality of military duties associated with the MOS
code, the military duties comprising skills or tasks associated
with a corresponding military occupation, each record mapping
the plurality of military duties associated with the MOS code to
a set of civilian skills;
receiving a MOS code at the computer system;
generating by the computer system, a set of inputs
comprising the plurality of military duties associated with the
received MOS code;
[A] translating by the computer system, a military duty in
the set of inputs to one or more civilian skills by using the stored
mappings of the plurality of military duties associated with the
MOS code to the set of civilian skills, and generating for
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each civilian skill mapped to a military duty a matching score
representing a degree of association between the military duty
and civilian skill;
identifying by the computer system, one or more civilian
occupations associated with the one or more civilian skills
resulting from the translation of the military duties in the set of
inputs;
for identified civilian occupations, generating a relevancy
score representing a relevancy of the civilian skill to the civilian
occupation based upon the matching scores for the civilian skills;
and
ranking the identified civilian occupations based upon
their relevancy scores.
REJECTIONS
The Examiner made the following rejections:
Claims 1—7, 9—20, 22—33, and 35—39 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. 3^4. Specifically, the Examiner
determines the claims are drawn to (i) a longstanding business practice (e.g.,
determining the equivalence between inputs related to military experience
and civilian skills to identify corresponding civilian occupations); and (ii)
organizing information through mathematical correlations (e.g., generating
matching and relevance scores), which are abstract ideas. Final Act. 2; Ans.
3.
Claims 1, 2, 6, 7, 9, 11-15, 19, 20, 22, 2A-28, 33, 35, and 37-39 are
rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
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http://www.military.com/veteran-job/skills-translator/, Oct. 31, 2009) (last
visited on Sept. 5, 2017) (hereinafter, “Military.com”), Mitchell et al. (US
2007/0059671 Al; published Mar. 15, 2007) (Mitchell”), and Kerr et al. (US
2011/0238591 Al; published Sept. 29, 2011) (“Kerr”). Final Act. 4-7; Ans.
A-8.
Claims 3, 16, and 29 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Military.com, Mitchell, Kerr, and Chriest et al. (US
5,978,767; issued Nov. 2, 1999) (“Chriest”). Final Act. 7—8.
Claims 4, 5, 10, 17, 18, 24, 30, 31, and 37 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Military.com, Mitchell, Kerr,
and Calannio (US 2007/0294092 Al; published Dec. 20, 2007). Final Act.
9-11.
ANALYSIS
35 U.S.C. § 101 Non-Statutory Subject Matter
Appellants present arguments primarily as to claim 1, and rely on the
arguments presented as to independent claim 1 for remaining independent
claims 14 and 27. See App. Br. 8—20; Reply Br. 2—8. The Examiner has
rejected each of claims 1—7, 9—20, 22—33, and 35—39 for the reasons
expressed in the Final Rejection (Final Act. 2—3) and the Answer (Ans. 3 4).
Although Appellants contend the Examiner fails to address each and every
claim (App. Br. 20; Reply Br. 7—8), this argument is conclusory and does not
address the merits of each and every claim contended to be patent eligible.
Although we agree with Appellants that claims 2—7, 9—20, 22—33, and 35—39
must be examined, they have been examined. We select claim 1 as the
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representative claim for this group, and the remaining claims 2—7, 9—20, 22—
33, and 35—39 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
We have reviewed the Examiner’s rejection in light of Appellants’
arguments. For the reasons discussed infra, as well as the reasons provided
by the Examiner in the Final Rejection (Final Act. 2—3) and the Examiner’s
Answer (Ans. 3—4), we are not persuaded by Appellants’ arguments (App.
Br. 8—20; Reply Br. 2—8) that the Examiner erred in rejecting claims 1—7, 9—
20, 22-33, and 35-39 under 35 U.S.C. § 101.
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: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CIS
Bank Inti, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (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 Corp., 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
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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.” Alice
Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297—98). For claims
to pass muster, “at step two, an inventive concept must be evident in the
claims.” RecogniCorp, LLCv. Nintendo Co., 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, 132 S. Ct. at 1293. 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 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.
None of the individual steps of the computer implemented method of
claim 1, viewed “both individually and ‘as an ordered combination,”’
transform the nature of the claim into patent-eligible subject matter. See
Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297, 1298). The
claimed sequence of steps comprises only “conventional steps, specified at a
high level of generality,” which is insufficient to supply an “inventive
concept.” Id. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1297, 1300).
We agree with the Examiner’s determination (Final 2; Ans. 3) that the
claims are drawn to (i) a longstanding business practice (e.g., determining
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the equivalence between inputs related to military experience and civilian
skills to identify corresponding civilian occupations); and (ii) organizing
information through mathematical correlations (e.g., generating matching
and relevance scores), which are abstract ideas. The claimed elements of
storing records, receiving a MOS code, generating inputs, translating a
military duty to civilian skills and generating a matching score between the
military duty and civilian skill, identifying civilian occupations and
generating relevancy scores to rank civilian occupations are fundamental
economic practices, longstanding business practices, and/or the organization
of either (i) information through mathematical correlations, and/or (ii)
human activity, and therefore are not enough to transform the abstract idea
into a patent-eligible invention. Appellants’ arguments (App. Br. 9—14;
Reply Br. 2—5) to the contrary are not persuasive of Examiner error.
In addition, at least the following decisions from our reviewing court
have found many types of fundamental economic/commercial practices
patent ineligible: OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d
1359 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701 (mem.) (2015) (holding
that claims drawn to offer-based price optimization are abstract and
therefore patent ineligible); NexusCard, Inc. v. Kroger Co., 2016-2074
(mem.) (Fed. Cir. 2017) (affirming district court’s holding that a
membership discount program on a network are abstract and therefore patent
ineligible); buySafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)
(transaction guaranty); Personalized Media Communications, L.L.C. v.
Amazon, Inc., 671 F. App’x. Ill (mem) (Fed. Cir. 2016) (receiving
instructions for ordering); Macropoint, LLC v. Fourkites, Inc., 671 F. App’x
780 (mem) (Fed. Cir. 2016) (tracking freight); Wireless Media Innovations,
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LLC v. Maher Terminals, LLC, 636 F. Appx. 1014 (mem) (Fed. Cir. 2016)
(monitoring shipping containers); America s Collectibles Network Inc. v.
Jewelry Channel, Inc. USA, 672 F. App’x 997 (mem) (Fed. Cir. 2017)
(conducting reverse auction by adjusting price and inventory); and Easy Web
Innovations, LLC v. Twitter, Inc., No. 2016-2066, 2017 WL 1969492 (Fed.
Cir. 2017) (receiving, authenticating, and publishing data). In this light, the
method for translating a military occupation specialty code to a civilian
occupation recited in claim 1 on appeal is a commercial practice and/or
organization of human activity that is economic and fundamental in nature.
Furthermore, at least the following decisions from our reviewing court
has found a process of operating on information using mathematical
formulas/correlations patent ineligible: Digitech Image Technologies, 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 Fed. Appx. 920
(mem.)(Fed. Cir. 2013) (rendering a decision based on data and
mathematical formulas); EResearch Technology, Inc. v. CRF, Inc., 2017 WL
1033672 (mem.)(Fed. Cir. 2017) (obtaining data, generating an algorithm by
quantitative analysis, and translating the algorithm into a more useful rule).
Alice'. Step Two
According to Alice step two, 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.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo,
132 S. Ct. at 1297—98). For claims to pass muster, “at step two, an inventive
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concept must be evident in the claims.” RecogniCorp, LLC v. Nintendo Co.,
855 F.3d 1322, 1327 (Fed. Cir. 2017).
Here, the Examiner finds the claims do 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. Final Act. 3^4; Ans. 2—3. In other words, the Examiner finds
the method for translating a military occupation specialty code to a civilian
occupation recited in claim 1 to be implementable by a general purpose
computer, and even implementable by a human using pen and paper. We
agree. Appellants’ arguments (App. Br. 14—20; Reply Br. 5—8) to the
contrary are not persuasive of Examiner error.
Regarding step two of Alice, Appellants argue that independent claim
1 recites “significantly more” than an alleged abstract idea(s) because it goes
beyond conventional computer operations and improves the technology area
of providing a method of translating a military occupation specialty code to
a civilian occupation for a user. See generally App. Br. 14—20. More
specifically, Appellants contend the claims are drawn to more than an
abstract idea by actually generating (i) a matching score representing a
degree of association between a military duty and a civilian skill, and (ii) a
relevancy score based on the matching score, and (iii) ranking the identified
civilian occupations based on their relevancy scores {id.). We are not
persuaded by Appellants’ arguments that the operations in claim 1 are an
improvement to any technology as opposed to an improvement to a
fundamental economic practice.
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As the Examiner finds, and we agree, the claims merely recite a
computer implemented method for translating a military occupation
specialty code to a civilian occupation for a user. Final Act. 2—3; see also
Ans. 3^4. Given that the claims are directed to the fundamental economic
practice of translating a military occupation specialty code to a civilian
occupation for a user, the claimed elements of (i) storing records, receiving a
MOS code, generating inputs, translating a military duty to civilian skills
and generating a matching score between the military duty and civilian skill,
identifying civilian occupations and generating relevancy scores to rank
civilian occupations are not enough to transform the abstract idea into a
patent-eligible invention. See Alice, 134 S. Ct. at 2358. Considering the
claim elements individually and as an ordered combination, the method
recited in representative claim 1 does no more than simply instruct the
practitioner to implement the abstract idea on a generic computer or
processer. Id. at 2359; Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34
(Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible.”).
Thus, we find the claims are not directed to an improvement to
computer functionality, but are directed to an abstract idea.
Summary
In view of the foregoing, we sustain the Examiner’s rejection under 35
U.S.C. § 101 of independent claims 1, 14, and 27, as well as dependent
claims 2—7, 9—13, 15—20, 22,-26, 28—33, and 35—39 not argued separately,
except based on their dependence on each respective independent claim.
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35U.S.C.§ 103
Appellants primarily argue independent claim 1, and rely on those
arguments as to the patentability of remaining independent claims 14 and 27,
as well as dependent claims 2, 6, 7, 9, 11—13, 15, 19, 20, 22, 24—26, 33, 35,
and 37—39 (App. Br. 20-24; Reply Br. 8—9). As a result, we select
independent claim 1 as the representative claim for the group of claims
rejected over the base combination ofMilitary.com, Mitchell, and Kerr and
will address Appellants’ arguments thereto. 37 C.F.R. § 41.37(c)(l)(iv).
The outcome of the obviousness rejections of (i) claims 3, 16, and 29 over
Military.com, Mitchell, Kerr, and Chriest; and (ii) claims 4, 5, 10, 17, 18, 24,
30, 31, and 37 over Military.com, Mitchell, Kerr, and Calannio, will stand or
fall with the outcome as to the obviousness rejection of representative claim
1 over the base combination ofMilitary.com, Mitchell, and Kerr.
Appellants argue (App. Br. 20-24; Reply Br. 8—9) that the
combination ofMilitary.com, Mitchell, and Kerr fails to disclose the
translating step recited in limitation [A] of claim 1 (see supra claim 1).
However, this argument fails to address what would have been taught or
suggested to a person of ordinary skill in the art having common knowledge
concerning job placement processes in view of the combined teachings and
suggestions ofMilitary.com, Mitchell, and Kerr. Similarly, we are not
persuaded by Appellants’ argument (App. Br. 21—22; Reply Br. 8—9) that
Mitchell fails to disclose limitation [A] of claim 1 because Mitchell discloses
comparing two sets of skills and does not compare a single military duty and
a civilian skill. In addition, Appellants’ attempt to attack Mitchell
individually does not overcome the Examiner’s prima case of obviousness
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based on the combined teachings and suggestions ofMilitary.com, Mitchell,
and Kerr.
Military.com teaches translating a military occupation specialty code
to a civilian occupation. Mitchell teaches generating matching and
relevancy scores in a career analysis method based on a job skills evaluation,
including providing a degree of association as claimed (Mitchell Tflf 8, 9).
Kerr teaches translating occupational and experience codes and ranking
scoring results (1102) to identify occupation most suitable for a user.
We agree with the Examiner (Final Act. 4—6; Ans. 4—5) that the base
combination ofMilitary.com, Mitchell, and Kerr teaches or suggests the
claimed invention recited in representative claim 1, and Appellants’
arguments have not shown error in the Examiner’s factual findings or
ultimate conclusion of obviousness of representative independent claim 1.
In view of the foregoing, we sustain the Examiner’s obviousness rejection of
representative claim 1, as well as claims 2, 6, 7, 9, 11—15, 19, 20, 22, 24—28,
33, 35, and 37—39 grouped therewith, over Military.com, Mitchell, and Kerr.
For similar reasons, we sustain the obviousness rejections of (i) claims 3, 16,
and 29 over Military.com, Mitchell, Kerr, and Chriest; and (ii) claims 4, 5,
10, 17, 18, 24, 30, 31, and 37 over Military.com, Mitchell, Kerr, and
Calannio,
CONCLUSIONS
The Examiner did not err in rejecting claims 1—7, 9—20, 22—33, and
35—39 based upon a lack of patent eligible subject matter under 35 U.S.C.
§ 101, and the Examiner did not err in rejecting claims 1—7, 9—20, 22—33,
and 35—39 based upon obviousness under 35 U.S.C. § 103.
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DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
1-7, 9-20, 22-33, and 35-39 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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