Ex Parte Nibe et al

Patent Trial and Appeal Board

Nov 30, 2017

12429818 (P.T.A.B. Nov. 30, 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.
12/429,818 04/24/2009 Kjell Bjornar Nibe 191267/US 1801
25763 7590 12/04/2017
DORSEY & WHITNEY LLP - MINNEAPOLIS
ATTENTION: PATENT PROSECUTION DOCKETING DEPARTMENT
INTELLECTUAL PROPERTY PRACTICE GROUP - PT/16TH EL
50 SOUTH SIXTH STREET, SUITE 1500
MINNEAPOLIS, MN 55402-1498
EXAMINER
PAGE, EVAN RANDALL
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
ip. docket @ dorsey .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KJELL BJORNAR NIBE and EIRIK MIKKELSEN
Appeal 2017-000020
Application 12/429,818
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kjell Bjomar Nibe and Eirik Mikkelsen (Appellants)1 appeal under 35
U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—17 and 19—
21.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 RELIANT EXAMS AS is identified as the real party in interest. Appeal
Br. 3.
2 Claim 18 is cancelled.
Appeal 2017-000020
Application 12/429,818
CLAIMED SUBJECT MATTER
Claims 1, 8, and 15 are independent. Claim 15, reproduced below, is
illustrative of the claimed subject matter:
15. A test generation method for improving computer­
generated exams by generating sets of questions suited to
separating test candidates of different skill levels, the method
comprising:
storing a number of questions in a plurality of topics on a
computer database, wherein each question is associated with a
data set of prior use information related to answers given to the
question in previous tests presented to test candidates;
randomly selecting, with a computer system, questions
within at least one of the topics from the database;
evaluating, with the computer system, the selected
questions for inclusion in a new question set relative to
predetermined requirements applied to the prior use information
on the selected questions and their corresponding answers in the
data set,
wherein selected questions not fulfilling the
predetermined requirements are discarded from the new question
set and selected questions that do not fit a chosen profile
regarding selectivity and facility are rejected, such that a
controlled distribution of difficulty is obtained;
wherein the evaluation means is adapted to reject selected
questions not fulfilling the predetermined requirements by fitting
a number of correct answers per failure in the selected questions
with a predetermined distribution, so as to ensure the controlled
distribution of difficulty in the new question set; and
wherein the evaluation means is further adapted to indicate
a quality of the new question set by comparing an actual
reliability of the new question set in use to a calculated reliability,
assuming the new question set to have a same distribution of
characteristics as a known set of the questions having known
reliability.
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Appeal Br. vi—vii (Claims App.).
REJECTION
Claims 1—17 and 19—21 are rejected under 35 U.S.C. § 101, as being
directed to non-statutory subject matter.
ANALYSIS
Claims E 8, and 15
Appellants present the same arguments as to claims 1,8, and 15. See
Appeal Br. 12—23. We thus regard claims 1,8, and 15 to be argued as a
group. We take claim 15 as representative of this group, and claims 1 and 8
stand or fall with claim 15. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that claim 15 is directed to non-statutory
subject matter based on a judicial exception without adding significantly
more to the judicial exception. Final Act. 2; Ans. 4. More specifically, the
Examiner determines that claim 15 is directed to an abstract idea involving
generating, selecting, and evaluating questions to be answered, and
determining the quality of the questions by comparing their characteristics to
questions of known reliability. Final Act. 2; Ans. 4—6. The Examiner
explains that the abstract idea, as claimed, involves an uninstantiated
concept, plan, or scheme, in which new and stored information are compared
using rules to identify options, and using categories to organize, store, and
transmit information. Ans. 6—7. The Examiner further determines that
claim 15 does not include additional elements sufficient to amount to
significantly more than the judicial exception, because the claimed
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Application 12/429,818
functionality can be carried out on commonly known hardware, such as a
computer with basic input, output, processing capabilities, and database
storage, without producing any improvement in the functioning of the
computer itself. Id. at 7; see also Final Act. 2—3. The Examiner also
explains that recitation of a computer in claim 15 amounts to mere
instructions to implement the abstract idea using the computer hardware.
Ans. 7. As such, the Examiner determines that considering the additional
elements, both individually and in combination, there is no inventive
concept sufficient to transform the claimed subject matter into a patent-
eligible application. Id.
Appellants contend that claim 15 is not directed to an abstract idea.
Appeal Br. 16—17; Reply Br. 7. Appellants argue that the claims are not
directed to a method of organizing human activity because the claims do not
relate to interpersonal or intrapersonal activities, but rather require a
“subtractive” process. Appeal Br. 18—19; Reply Br. 8. Appellants also
argue that it is improper to consider that the claimed method could be
performed as a mental activity or by a human with a pen and paper. Reply
Br. 17—19. Rather, Appellants contend that their claims are similar to the
Diehr claims that were found to be subject matter eligible. Id. at 11—13
(citing Diamond v. Diehr, 450 U.S. 175 (1981)).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp., Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (citingMayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—1297
(2012)). According to the Supreme Court’s framework, it must first be
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determined whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, it is
then necessary to “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 132 S. Ct. at 1298, 1297). The Supreme Court characterizes
the second step of the analysis as “a search for an ‘inventive concept’ — i.e.,
an element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (alteration in the original) (quoting Mayo,
132 S. Ct. at 1294).
Claim 15 is directed to a test generation method for improving
computer-generated exams comprising the steps of storing questions in a
database, randomly selecting questions from the database, and evaluating the
selected questions relative to predetermined requirements. Appeal Br. vi—vii
(Claims App.). The selecting and evaluating steps are performed with a
computer system, where questions are discarded, rejected, or selected for
inclusion for a new question set. Id. Thus, claim 15 requires collecting and
analyzing data (questions) via the use of a machine, which are generic steps
in a method of generating a test. In other words, claim 15 is directed to a set
of rules performed by a computer system (i.e., a mathematical algorithm or a
software).
“Software can make non-abstract improvements to computer
technology just as hardware improvements can, and sometimes the
improvements can be accomplished through either route.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Accordingly, it
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must be determined if “the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea, even at the
first step of the Alice analysis.” Id. Here, the disputed limitations are not
directed to an improvement in a computer’s functionality. There is nothing
recited in claim 15 to suggest that, once a test or new question set is
determined by following the recited steps, the computer system that
implements the steps will be improved in function.
Instead, similar to the claims at issue in Electric Power Group, claim
15 recites a purported advance in uses for existing computer capabilities, not
new or improved computer capabilities. See Elec. Power Grp., LLC v.
Alstom S.A, 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also id. at 1353—1354
(explaining that an invention directed to the collection, manipulation, and
display of data is an abstract process). Accordingly, claim 15 is directed to
an abstract idea. See also Ans. 7 (“[The claimed invention] is similar to the
identified abstract ideas of comparing new and stored information and using
rules to identify options and using categories to organize, store, and transmit
information.”). We thus are not persuaded by Appellants’ contention that
their “improvements are necessarily rooted in computer technology, because
that is the technology in which the skills measurement exam industry
increasingly is based, and that is the technology required to carry out the
particular analysis procedures that are recited in the claims.” Appeal Br. 22;
see also Reply Br. 13—15.
Appellants contend that the Examiner fails to provide an historical
text, precedential ruling, or tangible evidence to show that the claimed
systems and methods are directed to a judicially recognized exception or that
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the claimed practices have been long prevalent in the industry, as described
by the Alice Court. Appeal Br. 17; see also Reply Br. 10—11.
Appellants do not apprise us of, and we are unaware of, any
requirement mandated by Alice that the Examiner must provide an historical
text or precedential ruling to show that the claimed systems and methods are
directed to a judicially recognized exception, or that the claimed practices
have been long prevalent in the industry. We note that the USPTO’s
Memorandum “Formulating a Subject Matter Eligibility Rejection and
Evaluating the Applicant’s Response to a Subject Matter Eligibility
Rejection,” dated May 4, 2016, cited by Appellants on page 9 of the Reply
Brief, states that “[cjiting to an appropriate court decision that supports the
identification of the subject matter recited in the claim language as an
abstract idea is a best practice” (emphasis added). In other words, citation
to a court decision is desirable, but is not a requirement for making a
rejection that a claim is directed to non-statutory subject matter.
Appellants appear to contend that the claimed method is not directed
to a judicially recognized exception because the claimed invention is novel
and nonobvious over the cited prior art. Appeal Br. 17.
This contention is not persuasive. Even assuming that claim 15 is “a
novel and nonobvious” modification, “[t]he ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr, 450
U.S. at 188—89. Thus, we are not apprised of error based on this argument.
Accordingly, because claim 15 is drawn to a method comprising
collecting and analyzing data and is not directed to an improvement of a
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computer’s functionality, claim 15 is directed to the abstract idea of
manipulating information using mathematical relationships by way of a set
of rules performed by a computer. Thus, in accordance with the first step of
the Alice framework, the Examiner correctly finds that claim 15 is directed
to an abstract idea.
Appellants argue that the Examiner fails to examine the claim
elements for an inventive step. Appeal Br. 19. Appellants argue that the
Examiner fails to address the claimed elements relating to a database and the
particular features relating to the steps involving evaluating, discarding, or
selecting the questions. Id. at 19—21; see also Reply Br. 15—16.
Claims must include additional features that are significantly beyond
“well-understood, routine, conventional activity” or a simple “instruction to
implement or apply the abstract idea on a computer.” Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (quoting Mayo, 132 S. Ct. at
1298); Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2358). Although
claim 15 sets forth certain data to be collected (by selecting questions from
the database), and indicates that an algorithm (“evaluation means”) is to be
used to manipulate the collected data (the selecting and evaluating steps are
performed with the use of a computer system, where questions are discarded,
rejected, or selected for inclusion in a new question set), the Examiner’s
determination that claim 15 does not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the claimed functionality can be carried out on commonly-known
hardware, such as a computer with basic input, output, processing
capabilities, and database storage, without producing any improvement in
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Application 12/429,818
the functioning of the computer itself, is correct. Ans. 7. Further, the
specific features of claim 15 reiterated by Appellants relate to data
processing steps, such as the selecting and the evaluating steps, which
merely implement the abstract idea. See Ans. 4—6. As such, claim 15 at
most requires only “mathematical algorithms to manipulate existing
information to generate additional information.” Digitech Image Techs.,
LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
Thus, the limitations of claim 15 do not transform the abstract idea
embodied in the claim. Rather, they simply implement the idea.
To the extent that Appellants are arguing that the claims do not
preempt because they are limited to the field of generating higher quality
questions (Appeal Br. 22—23), this argument is unpersuasive. In Electric
Power Group, the court noted that a field-of-use restriction, “limiting the
claims to the particular technological environment of power-grid
monitoring,” is insufficient. Elec, Power Grp., 830 F.3d at 1354. Further,
“[wjhile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed Cir. 2015).
Accordingly, claim 15, when considered “both individually and ‘as an
ordered combination,’” amounts to nothing more than an attempt to patent
the abstract idea embodied in the steps of the claim. See Alice, 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1298). Thus, the limitations of claim 15
fail to transform the nature of the claim into patent-eligible subject matter.
See id. (citing Mayo, 132 S. Ct. at 1297, 1298); see also Ans. 7.
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For these reasons, we sustain the Examiner’s decision rejecting claim
15 as being directed to non-statutory subject matter. Claims 1 and 8 fall
with claim 15.
Claims 2-7. 9-14. 16. 17. and 19-21
In regard to the dependent claims, Appellants contend that the
following are not related to an abstract idea: (1) the claimed data set
associated with each new question set (Appeal Br. 23), (2) prior use of
information concerning a ratio of correct answers to each question {id. at
24), (3) correlation between quality of answers and general quality of a test
{id.), (4) application of Kuder-Richardson or Cronbach’s Alpha measures
{id. at 25), and (5) a database including information about who contributed
to the questions {id.), among other things.
As discussed supra, the Examiner determines that Appellants’ abstract
idea involves new and stored information that are compared using rules to
identity options, and using categories to organize, store, and transmit
information. Ans. 6—7. Further as discussed supra, the inclusion of
additional features that are not significantly beyond “well-understood,
routine, conventional activity” or a simple “instruction to implement or
apply the abstract idea on a computer,” does not render a claim patent
eligible. See Ultramercial, 772 F.3d at 715; Bascom, 827 F.3d at 1349
(quoting Alice, 134 S. Ct. at 2358). As the Examiner explains, the disputed
limitations do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the claimed
functionality can be carried out on commonly known hardware, such as a
computer with basic input, output, processing capabilities, and database
storage, without producing any improvement in the functioning of the
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computer itself. Ans. 7. Moreover, the features recited in the dependent
claims are either merely insignificant pre-solution activity, insignificant
steps used to input data into a mathematical algorithm, or insignificant post­
solution activity. See Parker v. Flook, 437 U.S. 584, 590 (1978) (“The
notion that post-solution activity, no matter how conventional or obvious in
itself, can transform an unpatentable principle into a patentable process
exalts form over substance.”); cfMayo, 132 S. Ct. at 1298 (“Purely
‘conventional or obvious’ ‘[pre]-solution activity’ is normally not sufficient
to transform an unpatentable law of nature into a patent-eligible application
of such a law” (alteration in original) (quoting Flook, 437 U.S. at 590)).
Providing an analysis, without more, is more appropriately characterized as
an insignificant “post-solution activity” that does not support the invention
having an inventive concept. See Flook, 437 U.S. at 590. Like the Flook
claims, the dependent claims do not recite unconventional physical elements
or a functional relationship between abstract and physical elements.
Accordingly, claims 2—7, 9-14, 16, 17, and 19-21, are directed to an
abstract idea and when considered “both individually and ‘as an ordered
combination,”’ amount to nothing more than an attempt to patent the
abstract idea embodied in the steps of the claim. See Alice, 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1298). The limitations of claims 2—7, 9—
14, 16, 17, and 19—21 fail to transform the nature of the claims into patent-
eligible subject matter.
For these reasons, we sustain the rejection of claims 2—7, 9-14, 16,
17, and 19-21 as being directed to non-statutory subject matter.
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DECISION
We affirm the rejection of claims 1—17 and 19—21.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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