Ex Parte Steinberg et al

Patent Trial and Appeal Board

Jul 5, 2018

14180456 (P.T.A.B. Jul. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/180,456 02/14/2014 Linda Steinberg
20583 7590 07/06/2018
Jones Day
250 Vesey Street
New York, NY 10281-1047
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.
011948-1009-999 9206
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
MAILDATE DELIVERY MODE
07/06/2018 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 LINDA STEINBERG, ROBERT J. MISLEVY,
and RUSSELL G. ALMOND
Appeal2017-008423
Application 14/180,456
Technology Center 3700
Before: BENJAMIN D. M. WOOD, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
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Application 14/180,456
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to systems and methods for generating tests
for educational purposes. Spec. 1. 2 Claims 1, 14, and 20 are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method of designing
large numbers of varying assessment tasks for
inclusion on different versions of an assessment to be
administered in a computer-based assessment, the
method comprising:
generating, using a processing system, a
plurality of trifles, each trifle being based on subject
matter information or requirements information,
wherein a first trifle provides a reference to a source
of the subject matter information and a second trifle
provides the requirements information on which the
trifle is based for subsequent access to the source,
wherein the subject matter information is related to
one or more subject matters of an assessment, and
wherein the requirements information is related to
one or more requirements for the assessment;
generating, using the processing system, one
or more task model data structures, a particular task
model data structure (i) defining features of a group
of tasks having similar content and response
1 Appellants state that the real party in interest is Educational Testing
Service of Princeton, New Jersey. App. Br. 1.
2 The Amended Specification submitted March 26, 2014, lacks pagination
and line numbering. Therefore, our citations are to the original Specification
submitted February 14, 2014.
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Application 14/180,456
requirements, and (ii) being based on the first trifle
and the second trifle; and
generating, using the processing system, a
plurality of varying assessment tasks and
corresponding evidence models for scoring responses
received for those varying assessment tasks, wherein
each task is based on the particular task model data
structure, and wherein at least one of the varying
assessment tasks based on the particular task model
data structure is included on each of a plurality of
versions of the assessment, wherein the at least one
varying assessment task having content that differs
from all other variants produced using the particular
task model data structure is generated during
administration of an assessment on which the at least
one varying assessment task appears.
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter.
ANALYSIS
Because Appellants argue the claims as a group (App. Br. 6-23), we
decide the appeal on the basis of representative claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Having considered all of Appellants' arguments and any evidence
presented, we are not persuaded that the Examiner erred in rejecting claims
1-20 as directed to patent-ineligible subject matter. We address specific
arguments for emphasis in our analysis below.
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice Corporation
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Proprietary LTD. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014).
For the first step, we determine whether the claims at issue are directed to a
patent-ineligible concept such as an abstract idea, law of nature, or natural
phenomenon. Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 78-79). If
so, we advance to the second step where "we 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" of the otherwise patent-ineligible concept. Id.
(quoting Mayo, 566 U.S. at 78-79). The Court has described this second
step "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.
(citing Mayo, 566 U.S. at 72-73 (internal quotation marks and alterations
omitted)).
Alice-Step One
The Examiner finds that claim 1 "represents a series of mental steps
that could be carried out solely by a person using for example a pen and
paper, and is a method of organizing human activities akin to other non-
limiting examples of organizing human activities identified by the courts in
[Alice] and other cases, and is therefore an abstract idea." Final Act. 2.
Appellants dispute, inter alia, that the claims represent a series of
mental steps that can be carried out by a person using a pen and paper.
Appellants assert that "[t]he claimed subject matter is not merely applying a
computer to solve a problem in a manner in which a human would in his or
her head or with a pencil and paper," but "'requires a change that cannot be
performed in the human mind."' App. Br. 9 (quoting PNC Bank N.A. v.
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Secure Access LLC, PTAB Case CBM2014-0010, Sept. 9, 2014) (internal
alterations omitted). According to Appellants, "it is not practical for a
human test administrator to access a computer based-assessment during
exam administration to add newly created assessment tasks developed using
an evidence-centered approach." Id.
Claim 1 recites a computer-implemented method of designing large
numbers of varying assessment tasks comprising "generating, using a
processing system:" (1) "a plurality of trifles," (2) "one or more task model
data structures," and (3) "a plurality of varying assessment tasks." As
described in the Specification, these objects are created by "users" of the
described system-i.e., humans. The Specification describes the invention
as embodied in the "Portal Assessment Design System." Spec. 15:7-8. The
Portal Assessment Design System is a suite of software tools and a
standardized design database that "allows a user to generate assessments
through the evidence-centered design process." Id. at 10:11-15, 15:11-12
(emphasis added); see also id. at 19:3-5 ("Management of the evidence-
centered design object model is achieved through computer-based tools that
allow the user to create, edit, store/retrieve, report on and search for
assessment design objects" (emphasis added).). Thus, when read in light of
the Specification, claim 1 's generating steps are carried out by "users" of the
system-i.e., humans-with the assistance of the processing system. We
therefore agree with the Examiner that claim 1 recites a series of mental
steps. "[M]ental processes are a subcategory of unpatentable abstract ideas."
Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016) (internal citation and quotation marks omitted). Therefore, we agree
with the Examiner that claim 1 is directed to a patent-ineligible abstract idea.
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Further, we are not persuaded of Examiner error by Appellants'
argument that "it is not practical for a human test administrator to access a
computer based-assessment during exam administration to add newly
created assessment tasks developed using an evidence-centered approach,"
because Appellants do not support this statement with evidence or
persuasive argument. We are also not persuaded by Appellants' argument
that claim 1 is not directed to an abstract idea because "[t]he specific
structure of the claim along with the specific limitations make clear that the
present claims are not preempting all mechanisms for designing large
numbers of assessment varying tasks." App. Br. 15. As our reviewing court
has consistently held, "claims that are otherwise directed to patent-ineligible
subject matter cannot be saved by arguing the absence of complete
preemption." Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350,
1370 (Fed. Cir. 2017) (citing cases). Thus, "[a]rguments about the lack of
preemption risk cannot save claims that are deemed to only be directed to
patent-ineligible subject matter." Id.
Alice-Step Two
The Examiner finds that "[ t ]he claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of elements in the
claims other than the abstract idea per se amount to no more than: requiring
no more than a generic computer to perform generic computer functions that
are well-understood, routine and conventional activities previously known to
the industry." Final Act. 3.
Appellants responds that "[ e ]ven if it were determined that the claims
were hypothetically directed to an abstract idea as suggested by the
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Examiner, the 'additional elements' of independent claims 1, 14, and 20
ensure that the claims amount to significantly more than the alleged abstract
idea itself." App. Br. 22. According to Appellants, "[t]he additional
elements are not routine activities specified at a high level of generality, and
the additional elements go far beyond mere instructions to apply the alleged
abstract idea on a computer." Id.
"For the role of a computer in a computer-implemented invention to
be deemed meaningful in the context of [the Alice step two] analysis, it must
involve more than performance of well-understood, routine, and
conventional activities previously known to the industry." Content
Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d
1343, 1347--48 (Fed. Cir. 2014) (internal citation, quotation marks, and
alteration omitted). Claim 1 recites a "computer-based" method comprising
a series of mental steps using a generic "processing system." Generic
recitations of computer implementation "cannot transform a patent-ineligible
abstract idea into a patent-eligible invention." Alice Corp. Pty, Ltd. v. CLS
Banklnt'l, 134 S. Ct. at 2358-59. Thus, we are not persuaded that the
Examiner erred in determining that the additional limitations do not
transform claim 1 into a patent-eligible application of the patent-ineligible
abstract idea.
DECISION
For the above reasons, the Examiner's rejection of claims 1-20 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). See 37 C.F.R.
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§ 1.136(a)(l )(iv).
AFFIRMED
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