Ex Parte Strong et al

Patent Trial and Appeal Board

Mar 28, 2018

13270615 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/270,615 10/11/2011
105987 7590
Sage Patent Group/CA
P.O. Box 30789
Raleigh, NC 27622-0789
03/30/2018
FIRST NAMED INVENTOR
Margaret A. Strong
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.
20110092/1100-110092 2677
EXAMINER
FRISBY, KESHA
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
instructions@sagepat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARGARET A. STRONG, WENDY K. HUGHES, and
SHANE D. GERSON
Appeal2016-001641
Application 13/270,615 1
Technology Center 3700
Before JOHN C. KERINS, LEE L. STEPINA, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Margaret A. Strong et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner's final decision rejecting claims 1-25
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Final Act. 3. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify CA, Inc. as the real party in interest. Appeal Br. 1.
2 The Examiner initially rejected claims 1-25 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 2. The Examiner withdrew that rejection prior to appeal. See
Adv. Act. 1 (mailed April 30, 2015).
Appeal2016-001641
Application 13/270,615
THE CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates "to a quantitative approach
for analyzing/assessing technical communities." Spec. i-f 1. Claims 1, 11,
and 20 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. A method of assessing a technical community, the
method comprising:
retrieving, from a database, a plurality of characteristics
that each describe an aspect of the technical community, the
technical community comprising a group of members that share
expertise regarding a technical subject, wherein the plurality of
characteristics are collectively used to assess the technical
community;
identifying ones of the plurality of characteristics as
corresponding to respective stages of a lifecycle of the technical
community, wherein the lifecycle is defined by a model that is
indicative of a projected path of progress and decline of the
technical community;
retrieving, from the database, a plurality of categories
that each indicate a condition of the technical community;
generating an interface that displays the plurality of
characteristics as queries to be answered by a member of the
technical community and the plurality of categories;
receiving an input for each characteristic, wherein each
input comprises a quantitative input that provides, for a
corresponding characteristic, a qualitative opinion of the
member of the technical community with respect to at least one
category associated with the technical community;
generating a score based on at least one input;
identifying a stage of the lifecycle of the technical
community based on the score, wherein the score provides the
assessment of the technical community at the stage of the
lifecycle; and
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determining a potential of the technical community to
move to a more contributory stage of the lifecycle based on the
score,
wherein the retrieving the characteristics, the identifying
ones of the plurality of characteristics, the retrieving the
categories, the generating the interface, the receiving the input,
the generating the score, the identifying the stage, and the
determining the potential comprise operations performed by
one or more processors.
Appeal Br. 13 (Claims App.).
ANALYSIS
Legal Framework
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: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bankint'l, 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., 566 U.S. 66, 75-77 (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, 134 S. Ct.
at 2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. The
"directed to" inquiry asks not whether "the claims involve a patent-ineligible
concept," but instead whether, "considered in light of the specification, ...
'their character as a whole is directed to excluded subject matter."' Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal
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citations omitted). With respect to computer-enabled claimed subject
matter, it is helpful to determine whether the claims at issue can readily be
understood as simply adding conventional computer components to well-
known business practices or not. Id. at 1338. In that regard, we determine
whether the claims "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "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. (brackets in original) (quoting Mayo, 566
U.S. at 72-73).
Step One
Appellants argue "claims 1-25" or the "pending claims" as a group
rather than separately argue the claims, or note distinctions between the
claims. See, e.g., Appeal Br. 4, 6-9, 11; Reply Br. 2-5. We will do the
same here, and select claim 1 as representative when referring to specific
claim limitations. 37 C.F .R. § 41.37( c )(1 )(iv).
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The Examiner considered the claims "as a whole" and "considering all
claim elements both individually and in combination," concluded that the
claims "are directed to a series of steps for assessing a technical community
and thus an abstract idea." Final Act. 3--4; see also Adv. Act. 2 (mailed
April 30, 2015) (finding that claims are "directed to assessing a technical
community and/or a method of organizing human activity using a generic
computer"). The Examiner also found that specific steps within claim 1
abstract, including the "identifying steps" and "assessing a score." Adv.
Act. 2; Ans. 3--4. The Examiner further found that the claims, when stripped
of structural elements, "recite a method of organizing human activity." Ans.
4.
Appellants do not contest directly the Examiner's finding that the
claims are directed to an abstract idea in the Appeal Brief. See Appeal Br.
6-11. Instead, Appellants raise a series of arguments appearing to address
only step two of the Alice framework, arguing that the claims, even if
abstract, claim "significantly more" than the abstract idea. See id.
Appellants do, however, argue that the Examiner erred in finding that a
human can perform the claimed steps, which touches on whether the claims
are direct to an abstract idea. See Appeal Br. 9--10; Adv. Act. 2. 3
Appellants rely on the specification and references to "numerous
3 In the context of this argument, Appellants argue that the claimed
operations "amount to significantly more than the alleged abstract idea" (i.e.,
step two), and "that the practical application and specific operations recited
in the pending claims provide evidence that the subject matter is not abstract
(e.g., not purely mental)" (i.e., step one). Appeal Br. 10. Accordingly, we
consider Appellants' argument that a human cannot perform the claimed
steps as part of step one, with our discussion here also applying to
Appellants' effort to tie the argument to step two.
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communities and characteristics" that need to be assessed, as well as the
"sheer number of characteristics to be retrieved from a database and
identified." Id. at 9--10. Appellants' arguments do not establish error in the
Examiner's finding that a human could perform the claimed steps when
stripped of their computer functionality. The specification seems to
implicitly acknowledge this by describing the prior art approach to assessing
a technical community, which involved personal interviews and focus
groups. See Spec. i-f 4. The specification notes the "need for a
comprehensive, quantitative approach to analyze/assess technical
communities," but a human could add quantitative feedback during those
interviews and collate the data without a computer. See id. at i-f 5.
Moreover, the "sheer number" of characteristics and other metrics
Appellants point to are not claimed, and therefore the claims cover analysis
of a small number of characteristics. See Appeal Br. 13 (Claims App.). We
are not persuaded that an individual could not perform the claimed steps for
a more limited community and number of characteristics, through a series of
interviews and extensive notes, followed by collation and analysis of the
relevant data. See Spec. i-f 4. In addition, even if the Examiner erred in
finding that a human could perform the claimed steps, that error, standing
alone, would not warrant a conclusion that the Examiner erred in finding that
the claims are directed to an abstract idea or fail to add "significantly more"
to the abstract idea.
Appellants also raise an issue related to step one in Reply, where
Appellants take issue with the Examiner's finding that the claims "recite a
method of organizing human activity." Reply Br. 2 (quoting Ans. 4 ).
Appellants contend that "even if the recited operations for 'assessing a
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technical community' in the pending claims were interpreted as being
directed to an abstract idea (which Appellants do not concede), these claims
are not directed to the alleged judicially-recognized exception of a method of
organizing human activity." Id. According to Appellants, consideration of
the 2015 Guidelines, 4 which issued after Appellants filed the Appeal Brief,
support the position that the pending claims "are not directed to a judicially
recognized exception" as set forth in the Office's guidance. Reply Br. 2-3.
Appellants' arguments in Reply do not apprise us of error in the
Examiner's finding that claim 1 is directed to an abstract idea of "assessing a
technical community." Final Act. 4. Appellants argue that the Examiner
erred in finding that the claims amount to "organizing human activity," but
to the extent that Appellants implicitly suggest that this alleged error fatally
undermines the Examiner's conclusion that the claims are directed to an
abstract idea, we disagree. A finding that claims are directed to organizing
human activity is just one way to support the conclusion that the claims are
directed to an abstract idea. See 2015 Guidelines at 3-5. Moreover, to the
extent that Appellants' argument suggests that the Examiner was required to
cite to an analogous case to support a finding that the claims are directed to
an abstract idea, we again disagree. See Reply Br. 3. The 2015 Guidelines
do not impose a requirement that the Examiner must rely on case law
precedent in order to properly support such a finding. Rather, the 2015
Guidelines, when discussing the requirements of the examiner's prima facie
case, state that "the examiner's burden is met ... for example by providing a
reasoned rationale that identifies the judicial exception recited in the claim.
4 July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July
30, 2015) ("2015 Guidelines").
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... This rationale may rely, where appropriate, ... on the case law
precedent." Id. at 6 (emphasis added). In addition, the examiner's burden to
establish a prima facie case is satisfied by "notify[ing] the applicant ... [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132).
Here, we find the Examiner's rejection satisfies the initial burden of
production by identifying the claims as directed to assessing a technical
community, and identifying several claim limitations as abstract. See Final
Act. 3--4; Adv. Act. 2; Ans. 3--4. Appellants' arguments regarding whether a
human can perform the steps and the "organizing human activity" finding do
not apprise us of error in the Examiner's finding that the claims are directed
to an abstract idea.
We note the similarity between the claimed subject matter and the
claims before the court in Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016). In Electric Power, the method claims at issue
were directed to performing real-time performance monitoring of an electric
power grid by collecting data from multiple data sources, analyzing the data,
and displaying the results. Electric Power, 830 F.3d at 1351-52. The
Federal Circuit noted that "[i]nformation as such is an intangible," and that
"collecting information, including when limited to particular content (which
does not change its character as information), [is] within the realm of
abstract ideas." Id. at 1353. The Court held that the claims were directed to
an abstract idea, explaining that "[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
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displaying the results, and not any particular assertedly inventive technology
for performing those functions." Id. at 1354 ("[W]e have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category."). Appellants have not adequately shown that
collecting and analyzing information related to technical communities, and
analyzing what the results indicate about the communities, is rooted in an
improvement in computer technology. As in Electric Power, the focus of
the claims here is not on "an improvement in computers as tools, but on
certain independently abstract ideas that use computers as tools." Id. at
1354. The general similarity between the claims here and in Electric Power
provides further support for the finding that the claims are directed to an
abstract idea.
Step Two
The Examiner found that the "claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception." Final Act at 4. More specifically, the Examiner found that the
"only elements claimed are a database, interface, displays and processor,"
and such structures are "generically recited computer elements [that] do not
add a meaningful limitation to the abstract idea because they would be
routine in any computer implementation." Id. The Examiner also found that
"generally linking the system to a particular technological environment, that
is implementation via computers," is insufficient to amount to "significantly
more" than the abstract idea, when those features do "not change the
operation of the computer." Adv. Act. 2; see also Ans. 4. The Examiner
further found that
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[t]hese additional elements do not address a challenge particular
to the internet and/ or necessarily rooted in computer
technology, but rather address a challenge particular to
assessing human talents and determine and managing the values
of those talents. These additional elements do not improve the
function of the computers, but rather they merely limit the
abstract idea to a particular technological environment.
Ans. 4.
Appellants raise a series of arguments with respect to step two. First,
Appellants argue that the "non-obviousness of the pending claims is
evidence of 'transformation' into a patent-eligible invention." Appeal Br. 6
(emphasis omitted). Appellants contend that the withdrawal of all rejections
based on prior art establishes the novel and non-obviousness nature of the
claimed subject matter, and therefore the claims must provide the "inventive
concept" necessary to satisfy the second step of Alice. Id. at 6-7; Reply Br.
3--4.
The Examiner's withdrawal of rejections based on prior art does not
suffice to confer patent eligibility under 35 U.S.C. § 101. "[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility." Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). "[A]
claim for a new abstract idea is still an abstract idea." Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). "The search
for a § 101 inventive concept is thus distinct from demonstrating § 102
novelty." Id.
Next, Appellants argue that the "pending claims do not preempt the
alleged abstract idea of 'assessing a technical community"' because they do
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not cover the different methods disclosed in the prior art the Examiner relied
on in the previous rejections. Appeal Br. 8. Appellants again rely on the
withdrawal of previous rejections based on prior art as evidence of a lack of
preemption. See id.
The Examiner correctly noted in the Answer that the concept of
preemption is not a stand-alone test for eligibility, and questions of
preemption are inherent in the two-part framework of Alice. Ans. 6 (citing
2015 Guidelines). In addition, although the extent of preemption is a
consideration, the absence of complete preemption is not dispositive. See,
e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) ("While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility."). Accordingly, even if the claims do not tie-up or monopolize
the entire abstract idea as Appellants argue, that alone is not enough to
render the claims patent-eligible.
Appellants also argue that the Examiner failed to evaluate the claims
as a whole because the Examiner did not reference every limitation in the
analysis, and only discussed the preamble and certain claim limitations.
Appeal Br. 11. We are not persuaded that the Examiner did not properly
examine the claims as a whole. First, the Examiner stated that the claims
were analyzed "as a whole." Final Act. 3. Second, Appellants simply
assume that any limitation not expressly discussed by the Examiner
necessarily provides the "significantly more" required to satisfy step two of
Alice, but do not analyze any of those limitations or explain why they
amount to significantly more. See Appeal Br. 11. Appellants must do more
than broadly refer to "six ( 6) additional operations/steps" that the Examiner
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did not discuss in order to establish reversible error. Id. The question is not
whether these specific limitations are directed to an abstract idea, as
Appellants' argument implies, it is whether the claim is directed to an
abstract idea, and whether these limitations, considered individually or
considered with the claim as a whole, add significantly more. Appellants'
argument that the Examiner's failure to specifically address every limitation
amounts to a concession that they are not abstract or add "significantly
more" misses the mark, as does Appellants' reiteration that these steps are
"novel and non-obvious," because, as noted above, the patent-eligibility
inquiry is distinct from the anticipation and obviousness inquiries.
Finally, Appellants argue that the claims "should be found to be
patent-eligible for reasons similar to those set forth in DDR Holdings."
Appeal Br. 7 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014)). In support of the argument, Appellants argue that the
claimed solution is necessarily rooted in technology because it relates "to
retrieving information from computer databases and generating interfaces
based on computer models of a technical community lifecycle." Id.
Appellants also contend that "the claims recite a specific way to solve the
problem of assessing a technical community," namely "by determining a
potential of a technical community to move to a more contributory stage of
the lifecycle." Id.
We are not persuaded that the claims here are analogous to those
"rooted in computer technology" at issue in DDR. In DDR, the Federal
Circuit found that the claims "do not merely recite the performance of some
business practice known from the pre-Internet world along with the
requirement to perform it on the Internet. Instead, the claimed solution is
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necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." Id. at 1257.
Appellants do nothing more than recite the claim language without
explaining how it is directed to computer functions. That is not sufficient to
show that the Examiner erred. Moreover, Appellants' argument is
inconsistent with the language recited in the claims, and does not describe
how the computer components perform their functions. Unlike the claims in
DDR, we agree with the Examiner's finding that the claims in this case "do
not address a challenge particular to the internet and/or necessarily rooted in
computer technology, but rather address a challenge particular to assessing
human talents and determining and managing the values of those talents."
Ans. 4 ("These additional elements do not improve the function of the
computers, but rather they merely limit the abstract idea to a particular
technological environment.").
Further, although the claimed system and method may be more
efficient than prior art, non-computer solutions, that is not enough to make
the claims patent-eligible. See FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1095 (Fed. Cir. 2016) ("While the claimed system and method
certainly purport to accelerate the process of analyzing audit log data, the
speed increase comes from the capabilities of a general-purpose computer,
rather than the patented method itself."); Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he
fact that the required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the claimed
subject matter."). Accordingly, Appellants' reference to the ability of its
computerized system to handle "numerous communities and characteristics"
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does not establish error in the Examiner's findings when Appellants have not
explained adequately how the claims are directed to an improvement in
computer technology. See Appeal Br. 9--10. 5
Based on the foregoing, we are not persuaded that the Examiner erred
in finding that the claims are not directed to an inventive concept or
something more than the abstract idea. Accordingly, we sustain the rejection
of claims 1-25 as not directed to statutory subject matter.
DECISION
We affirm the decision of the Examiner to reject claims 1-25.
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
5 Appellants made an additional argument in Reply that the claims provide
improvements to another technology or technical field. Reply Br. 4--5. This
assertion was made for the first time in Reply, and is based on a portion of
the 2014 Interim Guidelines, which were available at the time of filing of
Appellants' opening Appeal Brief. Appellants portray the argument as a
response to the Examiner's discussion of computer-related claim limitations,
but the argument goes well beyond those findings and fails to establish good
cause for raising the argument for the first time in Reply. Accordingly,
Appellants waived the argument. See 3 7 C.F .R. 41.41 (b )(2) (2014 ).
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