Ex Parte Tashiro et al

Patent Trial and Appeal Board

Feb 7, 2018

11097523 (P.T.A.B. Feb. 7, 2018)

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.
11/097,523 03/31/2005 Jay Shiro Tashiro 132770.00005 8669
43755 7590 02/09/2018
Quarles & Brady LLP (General Regelman)
Attn: IP Docket
411 E. Wisconsin Ave.
Milwaukee, WI 53202
EXAMINER
BULLINGTON, ROBERT P
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/09/2018 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY SHIRO TASHIRO and DARREN R. CHOATE
Appeal 2016-001314
Application 11/097,523
Technology Center 3700
Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 10, 14, 16, and 20 under 35 U.S.C. § 101 as not directed
to patent eligible subject matter. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2016-001314
Application 11/097,523
THE INVENTION
Appellants’ invention uses a computer to administer and score an
academic test given to a student. Spec. 2, 6. Claim 10, reproduced below
with certain language at the end of the claim highlighted in italics, is
illustrative of the subject matter on appeal.
10. An article of manufacture comprising a information
storage medium selected from a magnetic information storage
medium, an optical information storage medium, and an
electronic information storage medium, a plurality of test
questions written to said information storage medium, said test
questions relating to a subject area, and a computer useable
medium having computer readable program code disposed
therein to assess a person’s knowledge of said subject area,
wherein said article of manufacture is interconnected to an
information display device and a data input device, the
computer readable program code comprising a series of
computer readable program steps to effect:
retrieving a plurality of test questions comprising (N)
questions in each of (M) categories relating to said subject area,
wherein (N) and (M) are each greater than 2;
selecting a plurality of first test questions for each of said
(M) categories;
displaying each of said first test questions on said
information display device;
receiving via said data input device zero or more answers to
said first test questions;
determining for each of said displayed first test questions if
that first test question was correctly answered;
calculating a first score comprising a percentage of first
questions correctly answered;
retrieving a pre-determined Excellent Threshold and a pre­
determined Excellent Points Assignment;
determining if said first score is greater than or equal to said
Excellent Threshold;
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operative if said first score is greater than or equal to said
Excellent Threshold:
allocating said Excellent Points Assignment;
assigning an End Of Pathway designation of Excellent;
and
ending;
operative if said first score is not greater than or equal to
said Excellent Threshold:
selecting second test questions for each of said (M)
categories, wherein, for each value of (j), a number of second
test questions for an (j)th category is based upon the number of
incorrectly answered first questions for said (j)th category,
wherein (j) is greater than or equal to 1 and less than or equal to
(M);
displaying each of said second test questions on said
information display device;
receiving via said data input device zero or more answers to
said second test questions;
determining for each of said displayed second test questions
if that second test question was correctly answered;
calculating a second score comprising a percentage of
second questions correctly answered;
retrieving predetermined values for a Good Threshold, a
Good-Pass Threshold, a Poor-Pass Threshold, a Good-Pass
Points Assignment, a Good-Fail Points Assignment, a Poor-
Pass Points Assignment, and a Poor-Fail Points Assignment;
operative if said first score is less than said Excellent
Threshold but greater than said Good Threshold, and if said
second score is greater than or equal to said Good-Pass
Threshold:
allocating said Good-Pass Points Assignment to said
person;
assigning an End Of Pathway designation of Good-Pass to
said person; and
ending;
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Application 11/097,523
operative if said first score is less than said Excellent
Threshold but greater than said Good Threshold, and if said
second score is not greater than or equal to said Good-Pass
Threshold:
allocating said Good-Fail Points Assignment to said person:
assigning an End Of Pathway designation of Good-Fail to
said person; and
ending;
operative if said first score is less than said Good
Threshold, and if said second score is greater than or equal to
Poor-Pass Threshold:
allocating said Poor-Pass Points Assignment to said person;
assigning an End Of Pathway designation of Poor-Pass to
said person; and
ending;
operative if said first score is less than said Good
Threshold, and if said second score is not greater than or equal
to said Poor-Pass Threshold:
allocating said Poor-Fail Points Assignment to said person;
assigning an End Of Pathway designation of Poor-Fail to
said person; and
ending;
wherein said plurality of questions comprise one or more
questions relating to a first category of knowledge relating to
said subject area, and one or more questions relating to a
second category of knowledge relating to said subject area;
wherein said computer readable program code to select a
plurality of first test questions from said predetermined
plurality of test questions further comprises a series of
computer readable program steps to effect selecting from said
plurality of questions (nl) first test questions relating to said
first category and (n2) first test questions relating to said
second category;
calculating a first category score Cl for said first category
by dividing the number of correctly answered first test
questions relating to said first category by (nl);
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calculating a first category score C2 for said second
category by dividing the number of correctly answered first test
questions relating to said second category by (n2).
OPINION
Current Posture of the Application on Appeal
The instant application made a previous appearance before the Board
that was decided on October 31, 2013 (the “Prior Decision”). In the Prior
Decision, the Board Affirmed the Examiner’s rejection of then pending
claims 10, 12—14, 16, 18—20, and 22—27 under 35 U.S.C. § 101 as directed
to non-patentable subject matter. Prior Decision 15. The Board also
disposed of various prior art rejections under 35 U.S.C. § 103(a). Id.
After entry of the Prior Decision, Appellants filed a Request for
Continued Examination on December 30, 2013 and, contemporaneously
therewith, filed an amendment cancelling all but claims 10, 14, 16, and 20.
See Preliminary Amendment dated December 30, 2013. Among other
things, Appellants added language to claim 10 that is italicized in the above
recitation of the claim. Id. On June 19, 2014, the Supreme Court entered its
decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).
Shortly thereafter, on August 8, 2014, the Examiner entered a non-final
rejection rejecting all pending claims under 35 U.S.C. § 101 as directed to
patent ineligible subject matter, after which the instant appeal was taken.
35 U.S.C. § 101 - Patent Ineligible Subject Matter
In Alice, the Supreme Court 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.” Id.
at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566
U.S. 66, 72—73 (2012)). According to the Supreme Court’s framework, we
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must first determine whether the claims at issue are directed to one of those
concepts. Id. If so, we must secondly “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. 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. (brackets in original) (quoting Mayo, 566 U.S. at 72).
Regarding the rejection of independent claim 10 with respect to the
first step, the Examiner determines that the claim is directed to the “abstract
idea of a method of organizing human activities.” Non-Final Action 2.
With respect to the second step of the Alice/Mayo analysis, the Examiner
finds:
The additional elements or combination of elements in the
claims other than the abstract idea per se amounts to no more
than: mere instructions to implement the idea on a computer.
Viewed as a whole, these additional claim elements do not
provide meaningful limitation(s) to transform the abstract idea
into a patent eligible application of the abstract idea such that
the claim(s) amounts to significantly more than the abstract idea
itself.
Id.
Claim 10
Appellants argue that claim 10 is not directed to an abstract idea or a
method of organizing human activity. Br. 15—17. According to Appellants,
“the Examiner’s unsupported thesis that Appellant’s claims relate to ‘a
method of organizing human activities’ lacks any merit whatsoever.” Id.
at 16. Appellants take the position that “assessing] a person’s knowledge of
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a subject area” is something other than an abstract idea related to organizing
human activities. Id. at 17.
In response, the Examiner directs our attention to the case of Planet
Bingo, LLCv. VKGSLLC, 576 F. App’x 1005 (Fed. Cir. 2014) as an
example of an abstract idea in the form of a method of organizing human
activity. Ans. 5.
Although the claims are not drawn to the same subject matter,
the abstract idea of managing a game of bingo is similar to the
abstract ideas of managing risk (hedging) during consumer
transactions (Bilski) and mitigating settlement risk in financial
transactions (Alice Corp.) In the present case, an abstract idea
of assessing a person’s knowledge of a subject area can be
performed mentally or in a computer and is similar to the kind
of “organizing human activity” that was at issue in Planet
Bingo and Alice Corp. The claims provide a series of mental
steps that can be performed by a human either in the human
mind or on paper which can be included in the non-limiting
examples of methods of organizing human activities.
Id. at 5—6; Ans. 8.
With respect to step 1 of the Alice/Mayo analysis, we agree with the
Examiner’s position that the invention is directed to a method of organizing
human activity. Assessing a person’s knowledge of a subject area by
administering and scoring/grading a test is similar to other abstract ideas that
have been found to relate to organizing human activities. See, e.g.,
Multimedia Plus, Inc. v. PlayerLync LLC, 695 F. App’x 577 (Fed. Cir. 2017)
(claim dealt with training program); See also Smart Systems Innovations,
LLCv. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017)
(“collection, storage, and recognition of data”); Netflix, Inc. v. Rovi
Corporation, 114 F. Supp.3d 927, 944 (N.D. Cal. 2015) (claims directed to
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“using a user’s viewing history to visually distinguish watched programs
from unwatched programs and to make recommendations”).
With respect to step 2 of the Alice/Mayo analysis, Appellants argue
that the Examiner ignores “additional elements” that the Board had
previously found patentable in the Prior Decision. Br. 18. Appellants argue
that these additional elements cover more than three (3) complete pages of
type-written text. Id. at 21.
In response, the Examiner points out that Appellants’ arguments about
subject matter that was “previously found patentable” related to prior art
rejections under 35 U.S.C. § 103(a) and that Appellants’ arguments are not
relevant for purposes of a Section 101 patentable subject matter analysis.
Ans. 12. We agree with the Examiner on this point.
With respect to Appellants’ “additional elements” arguments, the
Examiner takes the position that the three complete pages of “additional
elements” merely relate to the steps of administering and scoring a test and,
as such, merely evidence the fact that the claim is directed to an abstract
idea. Ans. 12—13; see also Claims App. claim 10 steps immediately
following: “the computer readable program code comprising a series of
computer readable program steps to effect'.'1'’ The Examiner points out,
correctly, that the elements in the claim that go to the issue of whether the
claimed subject matter is something more than a claim on the abstract idea
itself, are the elements directed to computerized administration of the test.
Ans. 13. The Examiner identifies these elements as an information storage
medium, a computer useable medium with program code, an information
display device, and a data device. Id. The Examiner considers these
elements as “commonly known hardware with basic input and output, and
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the claimed functionality does not produce any improvement in the
functioning of the computers themselves.” Id. The Examiner concludes,
therefore, that there is nothing ‘“significantly more’” in claim 10. Id.
We agree with the Examiner that the computerization elements in
claim 10 do not amount to something “significantly more” under step 2 of
the Alice/Mayo analysis. Appellants provide neither evidence nor persuasive
argument to contravene this point. It is well settled that merely relying on
the data storage and processing capabilities of a computer is insufficient to
overcome a rejection under Section 101. As our reviewing court has
explained, “the 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.” Bancorp Servs., L.L.C. v. Sun LifeAssur. Co. of
Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Similarly, the fact that
administration and scoring of an academic test could be performed more
quickly or efficiently via a computer does not materially alter the patent
eligibility of Appellants’ claims. It is now well settled that mere recitation
of a generic computer cannot transform a patent-ineligible abstract idea into
a patent-eligible invention. See Alice, 134 S. Ct. at 2358. Thus, merely
stating an abstract idea while adding the words “apply it” is not enough to
confer patent eligibility. Id.
[I]f that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 2359.
Under the second prong of the Alice/Mayo test, we have considered
whether the claim elements, both individually and “‘as an ordered
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combination,’” ‘“transform the nature of the claim’ into a patent-eligible
application.” See Alice, 134 S. Ct. at 2355. We are not persuaded that using
a computer to administer and score an academic subject matter test to
students satisfies the “significantly more” criteria under the second prong of
Alice/Mayo. Id. at 2359. Essentially, all Appellants have done here is use
generic computer data gathering, processing, and display technology to
administer and score/grade an academic test to a student. As in Alice, “each
step does no more than require a generic computer to perform generic
computer functions.” Id.
We have considered Appellants’ remaining arguments, and find them
to be without merit. Accordingly, we sustain the Examiner’s Section 101
rejection of claim 10.
Claim 16
Claim 16 is an independent claim. Claims App. Claim 16 is directed
to a computer program product and recites a plurality of limitations directed
to computer readable program code that causes certain specified outcomes or
results related to the administration and scoring/grading of an academic test.
Id.
As with claim 10, Appellants argue that claim 16 is not directed to an
abstract idea of organizing human activity. Br. 21. Given the similarity in
subject matter between claims 10 and 16, we find this argument
unpersuasive for the same reasons discussed above with respect to the
rejection of claim 10.
With respect to step 2 of Alice/Mayo analysis, Appellants direct our
attention to the plethora of “computer readable program code” limitations
recited in claim 16. Id. at 21—26. Appellants, once again, request that we
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take into account that the recital of such limitations covers more than three
pages of type written text. Id. at 26. Appellants argue that claim 16 recites a
“specific way to automate assessment of a person’s knowledge of a subject
area.” Id.
In response, the Examiner states, correctly, that claim 16 provides
nothing significantly more than generic computer hardware. Ans. 11. “The
limitations merely provide commonly known hardware with basic input and
output, and the claimed functionality does not produce any improvement in
the functioning of the computers themselves. As such, there is nothing
‘significantly more’ in claim 16.” Id. at 15.
Appellants’ “additional elements” argument is not persuasive.
Claim 16 presents an abstract idea of administering and scoring/grading an
academic test to a student. The fact that Appellants use more than three
page of typewritten text to describe a method of organizing human activity
does not make the idea any less abstract. The computer hardware and code
limitations merely implement the abstract idea. As previously discussed,
merely stating an abstract idea while adding the words “apply it” in
connection with generic computer technology is not enough to confer patent
eligibility. See Alice, 134 S. Ct. at 2358.
We have considered Appellants other arguments, including the non­
preemption arguments (see Br. 26—27), and do not find them persuasive. See
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, preemption concerns are fully
addressed and rendered moot). We sustain the Examiner’s Section 101
rejection of claim 16.
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Claims 14 and 20
Claims 14 and 20 are not separately argued by Appellants and are
deemed to fall with claims 10 and 16. See 37 C.F.R. § 41.37(c)(iv) (failure
to separately argue claims).
DECISION
The decision of the Examiner to reject claims 10, 14, 16, and 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)(iv).
AFFIRMED
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