Ex Parte Stacy et al

Patent Trial and Appeal Board

Oct 11, 2018

13872519 (P.T.A.B. Oct. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/872,519 04/29/2013
15951 7590 10/11/2018
Aptima, Inc.
12 Gill Street, Suite 1400
Attn: Patents/I ay Brooks
Woburn, MA 01801
FIRST NAMED INVENTOR
E. Webb Stacy
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.
APTI l 202PPPU 4259
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
10/11/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte E. WEBB STACY, COURTNEY DEAN,
ALAN CARLIN, and DANIELLE DUMOND
Appeal2017-007269
Application 13/872,519
Technology Center 3700
Before JAMES P. CAL VE, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
E. Webb Stacy et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision finally rejecting claims 1-21. 1 We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Aptima, Inc. is identified as the real party in interest. Appeal Br. 4.
Appeal2017-007269
Application 13/872,519
THE CLAIMED SUBJECT MATTER
Appellants' invention is directed to "automatically determining
instructional content to be presented to individual students." Spec. ,r 5.
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A computer implemented method for determining an action
for a user within a learning domain, the method comprising:
defining an initial learning model of a learning domain
compnsmg:
a plurality of learning domain states,
at least one learning domain action,
at least one domain learning domain state
transition,
and at least one learning domain observation;
determining an initial user state of the user;
the initial user state comprising one of the at least one
learning domain states;
determining an initial user action from the at least one
learning domain action with the initial learning model
given the initial user state as the at least one learning
domain state;
receiving a user observation of the user after the user
executes the initial user action;
the user observation comprising one of the at least one
learning domain observations;
determining, with a processor, an updated user state from
the plurality of learning domain states with the initial
learning model given the user observation; and
determining a subsequent user action from the at least
one learning domain action.
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Application 13/872,519
REJECTION2
Claims 1-21 are rejected under 35 U.S.C. § 101.
DISCUSSION
The Examiner finds that the claims "contain the same abstract idea
described in the July 2015 Interim Eligibility Guideline, namely, the abstract
idea of 'Mathematical Relationship/Formula"' or alternatively "an Idea of
itself." Final Act. 4--5. The Examiner finds that none of the claims "contain
additional elements that amounts to significantly more than the judicial
exception itself." Id. at 5. The Examiner indicates that claim limitations
relating to computer components are "considered to be conventional, well
known and routine in the art of computer science" and none of the claim
limitations "constitute[] an improvement to the technology or an
improvement to the functioning of [the] computer itself." Id. The Examiner
concludes that the claim limitations "are not sufficient to be interpreted as
additional elements that amount to significantly more than the judicial
exception itself." Id. at 6.
Appellants' first contention is that the claims are not directed to a
mathematical algorithm. Appeal Br. 22. Appellants acknowledge that the
claims recite "the product of a mathematical algorithm," but "confine the
claim to a particular useful application." Id. Appellants argue that "[t]he
claims confine their application to computer based trainers and in some
embodiments, computer based training with specific algorithms being used
2 In the Answer, the Examiner withdrew a rejection of claims 1-21 under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement. Ans. 2; Final Act. 2.
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Appeal2017-007269
Application 13/872,519
to support the trainers." Id. Appellants' second contention is that the
Examiner failed "to address the additional elements individually and as a
combination with other limitations of the claims" by "summarily
conclud[ing] all the limitations are directed to implementing an algorithm."
Id. at 23. Appellants relying on paragraphs 46 and 47 of the Specification,
argue that "the claimed solutions are very different than conventional
Intelligent Tutoring System (ITS) in that the claimed solutions provide for
automatic definition of individualized assessments and can more efficiently
progress students through the learning domain." Id. at 24.
With respect to whether the claims are directed to an abstract idea, the
Examiner responds that the limitations in independent claims 1, 13, and 18
of "Defining an initial learning model ... ," "Determining an initial user
state of the user," and "Determining, with a processor, an updated user state
... " are all based on a mathematical algorithm. Ans. 3--4. According to the
Examiner, "if a specific claim limitation includes ... a product of a
mathematical algorithm[,] then the claim by definition ha[ s] to include[]
some abstract idea." Id. at 6. With respect to whether the claim limitations
are analyzed separately or as an ordered combination to determine whether
the claims amount to "significantly more" than the abstract idea, the
Examiner responds that "the PCA and POMDP algorithm[s] are used in
appellant[s'] specification and claim limitation in a conventional manner that
is common in the field of computer engineering or computer programming."
Id. at 8.
In the Reply Brief, Appellants submit that the Examiner's statement
of the abstract idea in the Final Office Action can "only be supported if the
claims are improperly oversimplified." Reply Br. 4--5. Appellants also
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Application 13/872,519
assert that "the Examiner's Answer totally ignore[s] the claims being
directed to 'determining an action for a user within a learning domain' as the
claim terms should be interpreted in light of the specification." Id. at 5.
The Supreme Court has established a two part test for determining
whether a claim recites patent-eligible subject matter. Alice Corp. Pty. Ltd.
v. CLS Bank Int'!, 134 S. Ct. 2347, 2350 (2014). First, the claims are
examined to determine whether they are directed to a patent ineligible
concept such as an abstract idea. Id. If so, the claim elements are
considered both individually and as an ordered combination to determine
whether they transform the claim into a patent-eligible application. Id.
The Federal Circuit instructs, in connection with the first inquiry, that
The "abstract idea" step of the inquiry calls upon us to look at the
"focus of the claimed advance over the prior art" to determine if the
claim's "character as a whole" is directed to excluded subject matter.
Affinity Labs of Texas LLC v. DIRECTV LLC, 838 F.3d 1253, 1257-58 (Fed.
Cir. 2016) ( citations omitted).
In this case, the Examiner found that the claims contain the abstract
idea of a mathematical algorithm or an idea of itself. Final Act. 5; see also
Ans. 6. The Examiner never made a finding as to what the claims are
directed to in the manner described by the Federal Circuit in Affinity Labs so
that we can evaluate whether "the claim's 'character as a whole' is directed
to excluded subject matter." Id. The Examiner's findings that the claims
contain the idea of a mathematical algorithm or an idea of itself fails to
address the actual claim limitations, and, thus, is insufficient to establish that
the claims are directed to an ineligible abstract idea. For example, a central
determination underlying the rejection is that the claims recite the "product
of a mathematical algorithm," and therefore recite "the abstract idea of
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Appeal2017-007269
Application 13/872,519
'Mathematical Relationship/ Formula."' Final Act. 4--5; Ans. 4--6.
However, we agree with Appellants' position that the Examiner has
"improperly oversimplified the claims" and it is only "in some
embodiments" that "specific [ mathematical] algorithms [are] used to support
the trainers." Appeal Br. 22.
Further, even if the Examiner made sufficient findings to support such
a determination, the Examiner has not adequately explained why the claim
elements as an ordered combination do not transform the claim into a patent
eligible application. See Final Act. 5-6. The Examiner asserts in the
Answer that the claim steps individually are "routine and conventional in the
field." Ans. 7-8. However, this finding is not supported by the evidence of
record. For example, the Examiner finds the Partially Observable Markov
Decision Process and the Principal Component Analysis of Appellants'
Specification and dependent claims are "well known and considered to be
conventional in the field of computer algorithm and data analysis" (Ans. 5),
and are "mathematical algorithm[ s] that are commonly used in ... any
computer learning process" (id. at 5---6). The Examiner cites an unspecified
"[ d]ocument that contain[ s] a primer on" the claimed analyses as being
attached to the Answer, but there is no such document in the record. Id. at 5
n.1. The Examiner further cites an unspecified "search in the database
IEEExplor," but there is no corresponding documentation provided in the
record. Id. at 6. Even if the finding that the claim steps are routine and
conventional in the field was supported by the evidence, the Examiner still
does not adequately address the claim limitations as an ordered combination.
For these reasons, we are unable to sustain the Examiner's determination
that claims 1-21 are patent ineligible under 35 U.S.C. § 101.
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DECISION
The Examiner's decision rejecting claims 1-21 is reversed.
REVERSED
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