Ex Parte Nienstedt

Patent Trial and Appeal Board

Feb 28, 2019

13601591 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/601,591 08/31/2012 John Nienstedt SR.
27189 7590 03/04/2019
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
108575-00lUTl 5773
EXAMINER
GUILIANO, CHARLES A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
docketing@procopio.com
PTONotifications@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN NIENSTEDT SR.
Appeal2017-010914
Application 13/601,591
Technology Center 3600
Before IRVIN E. BRANCH, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision to reject claims 1-20, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Competitive Edge and
Research and Communication. App. Br. 2.
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Application 13/601,591
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to "assessing the effectiveness
of a message in influencing a person, and more particularly to measuring the
effect of a message, endorsement, biographical information or provision on a
group of people and scoring the persuasive effect of a message." Spec. ,r 1.
Claim 1, which is illustrative, reads as follows:
1. A method of assessing the effectiveness of a message,
compnsmg:
obtaining a first opinion from a plurality of respondents on
a position statement;
assigning a numerical value to each of the first opinions
from the plurality of respondents;
obtaining an assessment from the plurality of respondents
of at least one message related to the position statement;
assigning a numerical value to each assessment of each
message from the plurality of respondents;
obtaining a second opinion from the plurality of
respondents on the position statement after the plurality of
respondents have assessed the at least one message; and
calculating an effectiveness score of the at least one
message based on the numerical values of the assessments
provided by a number of respondents in the plurality of
respondents whose opinions on the position statement changed
from the first opinion to the second opinion, wherein calculating
the effectiveness score of the at least one message includes:
dividing the number of respondents into a first
subgroup of respondents having the associated second
opinions increase in agreement with the position statement
and a second subgroup of respondents having the
associated second opinions decrease in agreement with the
position statement;
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computing a first score for the at least one message
produced by the first subgroup of respondents and a
second score for the at least one message produced by the
second subgroup of respondents;
determining if the second score is a negative score;
and
if so, subtracting the second score from the first
score for the at least one message produced by the first
subgroup of respondents to obtain the effectiveness score.
Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Non-Final
Act. 7-9.
Claims 1-20 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. Non-Final Act. 9-11.
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. Non-Final Act. 11-15.
Claims 1-5, 10-15, and 20 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Luby et al. (US 2011/02023 88
Al; published Aug. 18, 2011) ("Luby") and Lee et al. (US 2010/0191680
Al; published July 29, 2010) ("Lee"). Non-Final Act. 15-26.
Claims 6-8 and 16-18 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Luby, Lee, and Johnmar
(US 2014/0032657 Al; published Jan. 30, 2014). Non-Final Act. 26-29.
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Claims 9 and 19 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Luby, Lee, Johnmar, and Hopwood
(US 2013/0124282 Al; published May 16, 2013). Non-Final Act. 29-30.
ANALYSIS
Rejection under 35 USC§ 112, First Paragraph
The Examiner finds the Specification fails to provide adequate written
support for the limitations:
dividing the number of respondents into a first subgroup
of respondents having the associated second opinions increase in
agreement with the position statement and a second subgroup of
respondents having the associated second opinions decrease in
agreement with the position statement;
computing a first score for the at least one message
produced by the first subgroup of respondents and a second score
for the at least one message produced by the second subgroup of
respondents;
determining if the second score is a negative score; and
if so, subtracting the second score from the first score for
the at least one message produced by the first subgroup of
respondents to obtain the effectiveness score,
as recited in claim 1 and similarly recited in independent claims 10 and 20.
Non-Final Act. 8. The Examiner finds the Specification "does not
adequately describe with sufficient clarity in such a way as to reasonably
convey to one skilled in the relevant art how the present invention performs
the above limitations." Id. Specifically, the Examiner finds:
Paragraph [0034] discusses that respondents whose opm10n
moved away from a candidate may be used to determine the
effectiveness score if the score by respondents whose opinion
moved away from a candidate (i.e. the second score) is a negative
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score, and the negative score is subtracted from the score of
persons whose opinion moved toward a candidate. Does
determining if the second score is a negative score mean
determining if the score is numerically negative or indicates a
negative sentiment? Pursuant to paragraphs [0020] and [0036]
of Applicant's Specification, the effectiveness score may be the
average of a rating scale that includes all positive numbers or a
different scale that includes both negative and positive numbers.
That is, in some circumstances, the effectiveness scores may
never be a negative number and in other circumstances the
effectiveness score may be either a negative or positive number.
If negative means numerically negative, then subtracting the
negative number, as would be required by the claim and
Applicant's Specification, amounts to adding the second score,
and adding the scores that are numerically negative would seem
to give a false indication of the effectiveness of a message.
Further, if negative means numerically negative, when the rating
scale contains only positive numbers, such as those recited in
dependent claims 6 and 16, the invention would never be capable
of producing a negative result, and the invention would be
inoperable. Additionally, if negative means negative sentiment,
Applicant's Specification does define which scores are negative
sentiment scores, and again, when the scores are determined
using a scale that includes numerically negative scores and if
negative sentiment coincides with numerically negative scores,
the calculation recited in the claims would result in a false
indication of the effectiveness of the message. In addition, these
claims and paragraph [0034] of Applicant's Specification seem
to presume that the effectiveness score of those whose opinion
moved toward the candidate is positive and the score from the
other group of respondents are the scores of respondents whose
opinion moved away from a candidate, and accordingly, it
appears the score for respondents who moved away from a
candidate should then be presumed to be negative, which would
make determining if the second score is negative to be
superfluous.
Non-Final Act. 8-9; see also Ans. 10-13.
Appellant contends "the application explicitly and inherently provides
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support [for] the claimed features." App. Br. 15-16 (citing Spec. ,r,r 26, 34--
39). Appellant argues:
[C]alculating the effectiveness score is described in the
specification in such a way as to reasonably convey to one skilled
in the relevant art that subtracting the second score from the first
score for the at least one message produced by the first subgroup
of respondents to obtain the effectiveness score can be
implemented using a numerical scale. For example, a negative
score is subtracted from the score produced by the movers that
moved toward Candidate A when calculating the effectiveness
score can be implemented with a computer program product
embodied on a computer-readable medium.
App. Br. 17. Appellant further argues one of ordinary skill in the art would
reasonably understand "the claim language of determining if the second
score is a negative score refers to a negative response"; and "how to
implement the second score so that it can be subtracted from the first score
for the at least one message produced by the first subgroup of respondents to
obtain the effectiveness score, such as employing an abs [absolute value]
program command." App. Br. 17.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir.
1991 ). Specifically, the specification must describe the claimed invention in
a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Id.; Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane).
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To have "possession," "the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed." Ariad, 598 F.3d at 1351. Original claims
may fail to satisfy the written description requirement when the invention is
claimed and described in functional language but the specification does not
sufficiently identify how the invention achieves the claimed function. Id.
For software, this can occur when the algorithm or steps for
performing the computer function are not explained at all or are not
explained in sufficient detail. It is not enough that one skilled in the art
could write a program to achieve the claimed function because the
specification must explain how the inventor intends to achieve the claimed
function to satisfy the written description requirement. See, e.g., Vasudevan
Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681---683 (Fed. Cir.
2015); MPEP § 2161.01(1).
Here, we agree with the Examiner that the Specification fails to show
how to achieve the claimed functionality of determining if the second score
is a negative score. Absent from the Specification is any discussion as to the
particular steps, i.e., algorithm, necessary to perform the claimed function.
As such, we agree with the Examiner that the Specification does not disclose
an algorithm in sufficient detail to demonstrate to one of ordinary skill in the
art that the inventor possessed the invention including how to perform the
claimed function. Non-Final Act. 8-9; see also Ans. 10-13. Stated
differently, the steps, procedure or algorithm used to determine if the second
score is a negative score is not described in sufficient detail in the
Specification to demonstrate that the inventor was in possession of that
knowledge. It is not enough that a skilled artisan could write a program to
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achieve the claimed function because the Specification must explain how the
inventor intends to achieve the claimed function to satisfy the written
description requirement. See, e.g., Vasudevan, 782 F.3d at 681-83; see also
MPEP § 2161.01(1) ("For computer-implemented inventions, the
determination of the sufficiency of disclosure will require an inquiry into the
sufficiency of both the disclosed hardware and the disclosed software due to
the interrelationship and interdependence of computer hardware and
software."). For these reasons, we are not persuaded the Examiner erred in
finding Appellant's disclosure does not reasonably convey possession of the
claimed subject matter.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 112, first paragraph.
Rejection under 35 US.C. § 112, Second Paragraph
The Examiner finds the limitations:
dividing the number of respondents into a first subgroup
of respondents having the associated second opinions increase in
agreement with the position statement and a second subgroup of
respondents having the associated second opinions decrease in
agreement with the position statement;
computing a first score for the at least one message
produced by the first subgroup of respondents and a second score
for the at least one message produced by the second subgroup of
respondents;
determining if the second score is a negative score; and
if so, subtracting the second score from the first score for
the at least one message produced by the first subgroup of
respondents to obtain the effectiveness score,
as recited in claim 1 and similarly recited in independent claims 10 and 20,
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render the claims indefinite. Non-Final Act. 9--10. In particular, the
Examiner finds the meaning of "negative score" is unclear and renders the
claims indefinite. Id.
Appellant argues "one of ordinary skill in the art would reasonably
understand the negative score refers to a non-convincing message in view of
the Specification" and that the "ordinary meaning of the claims terms are in
order to 'particularly pointing out and distinctly claiming the subject matter
which the applicant regards as his invention."' App. Br. 18; see also Reply
Br. 10-11.
Under 35 U.S.C. § 112, the claims must "particularly point[] out and
distinctly claim[] the subject matter" regarded as the invention. 35 U.S.C.
§ 112, second paragraph. A lack of definiteness renders the claims invalid.
Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 902 (2014). Claims,
viewed in light of the specification and prosecution history, must "inform
those skilled in the art about the scope of the invention with reasonable
certainty." Id. at 910; see Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014) ("The claims, when read in light of the
specification and the prosecution history, must provide objective boundaries
for those of skill in the art."). This standard "mandates clarity, while
recognizing that absolute precision is unattainable." Nautilus, 572 U.S. at
910. "'[A] claim is indefinite when it contains words or phrases whose
meaning is unclear."' In re Packard, 751 F.3d 1307, 1310, 1314--15 (Fed.
Cir. 2014).
We agree with the Examiner that the meaning of "negative score" is
unclear. According to Appellant, "negative score" refers to a "non-
convincing message." App. Br. 18. However, the Specification provides
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that the first and second scores computed for the at least one message may
be positive and/or negative values, depending on the set of numerical values
used to assign a numerical value to each of the first opinions and to each
assessment of each message. Spec. ,r,r 20-23. It is unclear whether
"negative score" refers to any numerical value ( either positive or negative)
assigned to a non-convincing message or to only negative values assigned to
these messages. As such, we agree with the Examiner that the term
"negative score" renders the claims indefinite.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 112, second paragraph.
Re} ection under 3 5 US. C. § 101
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,
216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 54--55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.
The Examiner finds the claims "describe the concept of measuring the
effect of a message on a respondent by calculating an effectiveness score."
Non-Final Act. 12. The Examiner further finds "[t]he concept of measuring
the effect of a message on a respondent by calculating an effectiveness score
is both a method of organizing human activity and a mathematical
relationship/formula, both of which are held by the courts to be abstract
ideas." Id.
Initially, Appellant argues the Examiner's rejection is improper
because the Examiner "fails to properly identify the abstract idea through
analyzing and identifying the limitation or limitations that describe or set
forth the abstract idea." App. Br. 11. Appellant further argues, a proper
analysis of the claims leads to a finding that the claims are not directed to an
abstract idea. Id. According to Appellant, "the task of the examiner is to go
beyond the broad categories and determine whether the claims are similar to
an identified patent-ineligible concept" and "the Examiner [is] to look at
examples of what the courts have found to be abstract ideas and by way of
comparison determine if the claims are directed to a similar abstract idea."
App. Br. 12. Appellant argues the method recited in claim 1 "is NOT one of
the examples, nor is it even abstract on its face - i.e., the way the [Examiner]
characterizes the abstract idea makes clear that the claims are NOT directed
to an abstract idea." Id.
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We find Appellant's arguments unpersuasive. We agree with the
Examiner that the claims are directed to "measuring the effect of a message
on a respondent by calculating an effectiveness score." Non-Final Act. 12.
Measuring the effect of a message on a respondent by calculating an
effectiveness score using rules as recited in Appellant's independent claims
1, 10, and 20 is nothing more than "mental processes" that could be
performed in the human mind or by a human using a pen and paper-a
subject matter that falls within the three types of abstract ideas identified by
the Memorandum. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372-73 (Fed. Cir. 2011) 1372-73 ("[A] method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101."); see also In re Comiskey, 554 F.3d 967, 979
(Fed. Cir. 2009) ("[M]ental processes----or processes of human thinking-
standing alone are not patentable even if they have practical application.");
Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("Phenomena of nature, ...
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work." (Emphasis
added)). Additionally, mental processes remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. CyberSource, 654 F.3d at 1375 ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
We discern no additional element ( or combination of elements)
recited in Appellant's claims 1, 10, and 20 that integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54--55 ("Prong Two"). For example, Appellant's claims 1, 10, and 20 do not
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(1) improve the functioning of a computer or other technology, (2) are not
applied with any particular machine (except for a generic computer), (3) do
not effect a transformation of a particular article to a different state, and ( 4)
are not applied in any meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. See MPEP §§ 2106.05(a}-(c), (e}-(h). We disagree with
Appellant that the claims are similar to the claims in Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). App. Br. 13.
Instead, generic computer components, such as, for example, first and
second opinion assessment units, a message assessment unit, and an
effectiveness calculation unit ( claim 10), are merely used as a tool to
facilitate the measuring of the effect of a message on a respondent by
calculating an effectiveness score. Enfzsh, 822 F.3d at 1335-36, 1338.
For these reasons, we find claims 1-20 are directed to an abstract idea
that is not integrated into a practical application.
Under current Federal Circuit precedent, an "inventive concept" under
Alice step 2 can be established by showing, for example, that the patent
claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014));
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
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end user" (BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350, 1352 (Fed. Cir.
2016)); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1300, 1302 (Fed.
Cir. 2016)).
Similarly, as recognized by the Memorandum, an "inventive concept"
under Alice step 2 can also be evaluated based on whether an additional
element or combination of elements:
(1) adds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present (see MPEP § 2106.05(d)); or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.
See Memorandum, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellant's claims 1, 10, and 20 that contains any "inventive
concept" or adds anything "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 221-22. For
example, Appellant's abstract idea of "measuring of the effect of a message
on a respondent by calculating an effectiveness score" using information and
rules as recited in Appellant's independent claims 1, 10, and 20 is not rooted
in computer technology; nor does it (1) provide any technical solution to a
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technical problem as required by DDR Holdings; (2) provide any particular
practical application as required by Bascom; or (3) entail an unconventional
technological solution to a technological problem as required by Amdocs.
Instead, Appellant's invention simply uses generic computer components to
perform the abstract idea of "measuring the effect of a message on a
respondent by calculating an effectiveness score." In fact, the only
"additional elements" recited in Appellant's claims merely implement the
abstract idea on generic computing elements. See Spec. Fig. 2; ,r,r 41--43.
However, the use of a generic computer device does not alone transform an
otherwise abstract idea into patent-eligible subject matter. As our reviewing
court has observed, "after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible." DDR Holdings, 773 F.3d at 1256 (citing Alice, 573 U.S. at
223).
Moreover, Appellant has not shown any specific limitation in claims
1, 10, and 20 beyond the judicial exception that is not "well-understood,
routine, and conventional" in the field (see MPEP § 2106.05(d)).
Appellant's argument (App. Br. 13) that the claims recite subject matter that
is novel and non-obvious over the prior art is not persuasive because a novel
and nonobvious claim directed to a purely abstract idea is, nonetheless,
patent-ineligible. See Mayo, 566 U.S. at 90-91.
Because Appellant's claims 1-20 are directed to a patent-ineligible
abstract concept, and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
these claims under 35 U.S.C. § 101.
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Rejections under 35 USC§ 103(a)
Appellant contends the combination of Luby and Lee fails to teach or
suggest:
calculating an effectiveness score of the at least one
message based on the numerical values of the assessments
provided by a number of respondents in the plurality of
respondents whose opinions on the position statement changed
from the first opinion to the second opinion, wherein calculating
the effectiveness score of the at least one message includes:
dividing the number of respondents into a first
subgroup of respondents having the associated second
opinions increase in agreement with the position statement
and a second subgroup of respondents having the
associated second opinions decrease in agreement with the
position statement;
computing a first score for the at least one message
produced by the first subgroup of respondents and a
second score for the at least one message produced by the
second subgroup of respondents;
determining if the second score is a negative score;
and
if so, subtracting the second score from the first
score for the at least one message produced by the first
subgroup of respondents to obtain the effectiveness score,
as recited in claim 1. App. Br. 21-22. In particular, Appellant argues "[i]n
Luby, behavioral correlations are used to predict changes rather than finding
respondents whose opinions on the position statement changed." Reply
Br. 12 (citing Luby ,r,r 19, 81, 88). Appellant further argues "[n]othing in
Lee teaches or suggests user's with changing opinions of a position
statement" and "nothing in Lee, alone or in combination with Luby, teaches
or suggests calculating an effectiveness score of a message based on the
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numerical values of assessments from subgroups of respondents with
different changing opinions of the position statement." App. Br. 22 (citing
Lee ,r,r 35, 42--43); see also Reply Br. 12.
The Examiner finds Luby teaches "respondents whose opinions on the
position statement changed from the first opinion to the second opinion,"
"respondents having the associated second opinions increase in agreement
with the position statement," and "respondents having the associated second
opinions decrease in agreement with the position statement." Ans. 16-18
(citing Luby ,r,r 3, 4, 28, 35, 74--77, 80, 82, 85-86, 89; Fig. 4; Abstract)
( emphasis omitted). The Examiner finds Lee teaches dividing the number of
respondents into a first subgroup of respondents having the associated
positive agreement with the position statement and a second subgroup of
respondents having negative agreement with the position statement. Non-
Final Act. 17 ( citing Lee ,r,r 35-36, 53).
The Examiner concludes the combination of Luby and Lee teaches or
suggests the disputed limitation because:
At the time the invention was made, it would have been obvious
to one of ordinary skill in the art to include in the promotion
assessment survey systems of Luby the ability to calculate a
metric by subtracting the sum of ratings of respondents from one
subgroup of respondents from the sum of ratings from another
subgroup of respondents as taught by Lee since the claimed
invention is merely a combination of old elements, and in the
combination each element merely would have performed the
same function as it did separately, and one of ordinary skill in the
art would have recognized that the results of the combination
were predictable. Further, it would have been obvious to one of
ordinary skill in the art to modify Luby with the aforementioned
teachings of Lee in order to effectively evaluate the overall
opinions of the respondents by calculating a reliable and
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objective aggregate metric reflecting opm10ns of disparate
subgroups of respondents.
Non-Final Act. 18.
The Examiner, however, fails to explain how determining how the
detail and counter detail contributes to changes in respondent attitudes and
beliefs surrounding the product, as taught by Luby (i-f 86) and determining a
rank of specific content based on a value obtained by subtracting a sum of
negative ratings from a sum of positive ratings, as taught by Lee (i-f 53)
teaches or suggests dividing the number of respondents into a first subgroup
of respondents whose opinions (regardless of whether the opinion is positive
or negative regarding the position statement) increase in agreement with the
position statement and a second group of respondents whose opinions
decrease in agreement with the position statement, as required by claim 1.
Accordingly, we do not sustain the Examiner's rejection under
35 U.S.C. § 103(a) of claim 1; independent claims, 10 and 20, which recite
corresponding limitations; and claims 2-9 and 11-19, which depend from
claims 1 and 10.
Appellant's arguments raise additional issues with respect to the
Examiner's rejection of claims 1-20 under 35 U.S.C. § 103(a). See App.
Br. 23-25. However, because we find the issue discussed above with
respect to claim 1 to be dispositive as to the rejection of all the pending
claims, we do not reach these additional issues.
DECISION
We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 112, first paragraph.
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We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 112, second paragraph.
We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 101.
We reverse the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 103(a).
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner 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)(l )(iv).
AFFIRMED
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