Ex Parte Towell et al

Patent Trial and Appeal Board

Dec 19, 2018

12173523 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/173,523 07/15/2008
30553 7590
Gunn, Lee & Cave, P.C.
8023 Vantage Dr.
Suite 1500
San Antonio, TX 78230
12/19/2018
FIRST NAMED INVENTOR
Dwayne E. Towell
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.
P-11745.3 6958
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
12/19/2018 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 DWAYNE E. TOWELL, GIDEON P. BOTHA, and
ROBERT J. REESE
Appeal2017-004897
Application 12/173,523
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dwayne E. Towell et al. (Appellants) 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 25--40 under
35 U.S.C. § 101 as being directed to a judicial exception to patent-eligible
subject matter (i.e., an abstract idea) without significantly more. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies Pharos Resources as the real party in interest.
Appeal Br. 1.
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Application 12/173,523
THE CLAIMED SUBJECT MATTER
Appellants' invention "relates generally to a software system that
works as a client and or case management tool designed to facilitate the
assistance of a student at an educational institution" and, more particularly,
"provides means for members of an educational institution to efficiently
interact, transmit, and gather information to proactively identify and assist a
student in need." Spec. ,r 1. Claim 25, reproduced below, is illustrative of
the claimed subject matter.
25. A computer implemented method for gathering, linking,
and connecting information regarding a student in a community
displaying a deviation in personality not currently affecting
academic performance performed by one or more processors,
the method comprising:
identifying the student by a Circle of Care, the Circle of
Care comprising persons with an academic, social, familial,
romantic, residential, spiritual, and/or instructional relationship
to the student, and at least one of said Circle of Care persons
inputting and/ or viewing text at category scale responses into
the processor, said processor interlinking input with
previously known data regarding said student and creating a
student file;
accessing said data and input, said data and input capable
being immediately received and reviewed by a coordinator, said
coordinator having customized access to view and input the text
and category scale responses regarding the student into the file,
and said coordinator making a determination as to whether the
student has a need that can be addressed in the community, said
determination input and interlinked with the student's file;
transmitting data requests from the coordinator to the
student's identified Circle of Care capable of being immediately
accessed, and interlinking the requests with the student's file;
transmitting communications regarding the student to the
coordinator and the Circle of Care, said communications
interlinking with the students file;
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transmitting transcribed communications to the student
from the coordinator to investigate the student's potential need
that can be addressed in the community, said transcribed
communications being interlinked with the student's file;
receiving information from the student regarding the
need that can be addressed in the community for review by the
coordinator, said information interlinked with the student's file;
receiving information not originally input onto one of
said processors, said information being transformed to data
viewable on a computer, being input onto the processor and
interlinked with the student's file;
synchronizing the accessibility by the coordinator and the
Circle of Care in a variety of environments including the home,
office, or personal setting, such that all allowed information that
is interlinked is available;
retaining the data collected regarding the student in a
community for the duration of the student's membership in the
community;
updating the data regarding the student in the memory at
least daily, interlinking all data; and
wherein the use of the one or more processors
synchronizes and interlinks data available for analysis by the
coordinator, thus synergistically connecting members of the
Circle of Care with the coordinator and student, and allowing
the coordinator to assess data of a plurality of students within
the community; and
wherein interlinked data regarding the student may be
accessed and searched in relation to data of another student for
immediate viewing of similar deviations of personality not
currently associated with academic performance, assistance
rendered, and maintenance of membership within the
academic community.
DISCUSSION
Section 101 of the patent law provides that one may obtain a patent
for "any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The
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Supreme Court has held that this provision includes important exceptions,
notably those that prohibit one from patenting abstract ideas, laws of nature,
or natural phenomena. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S.
208, 216-17 (2014). Although a law of nature or an abstract idea is not
patentable, the application of these concepts may be patentable. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70-72 (2012).
The Supreme Court has 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." Alice,
573 U.S. at 217 (citing Mayo, 566 U.S. at 71-72). Under that framework,
we first "determine whether the claims at issue are directed to one of those
patent-ineligible concepts"-i.e., a law of nature, a natural phenomenon, or
an abstract idea. Id. If so, we 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. (quoting Mayo, 566 U.S. at 77-79). The Supreme Court
has described the second part 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. (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
Step One: Are the Claims Directed to an Abstract Idea?
The Federal Circuit has described the first step as a determination of
the "basic character of the claimed subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (citing Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273-74
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(Fed. Cir. 2012)). The Federal Circuit has also indicated that this step
should determine whether a claimed method "recites an abstraction-an
idea, having no particular concrete or tangible form." Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see also Alice, 573 U.S. at
218 ("The 'abstract ideas' category embodies 'the longstanding rule that
"[a]n idea of itself is not patentable.""' (quoting Gottschalkv. Benson, 409
U.S. 63, 67 (1972) (further quotations and citations omitted))).
The Examiner determines that claims 25--40 recite "a series of steps
that compare[] and format information for transmission or a series of steps
that ... compare[] new and stored information and us[ e] rules to identify
options." Final Act. 4. Thus, the Examiner analogizes claim 25 to other
concepts that have been identified as abstract by the courts. Id.; see, e.g.,
Cyberfone Sys., LLC v. CNN Interactive Grp., 558 F. App'x 988, 992 (Fed.
Cir. 2014) (stating that "the idea of collecting information in classified form,
then separating and transmitting that information according to its
classification, is an abstract idea that is not patent-eligible").
Appellants appear to acknowledge that the concept of "using
categories to organize, store, and transmit information" is an abstract idea.
See Appeal Br. 16. Further, Appellants concede that the software of their
invention "does collect, categorize, and store data." Id. at 17. However,
Appellants submit that "[i]nformation is garnered from persons with a
relationship with the student (Circle of Care)" and that "the formula is the
examination by a human mind (the coordinator), and the mind's action to
resolve the need." Id. at 16. According to Appellants, "[t]he present
invention is a platform for connection between those who see need and those
who can address it." Id. Appellants contend that the abstract idea category
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of "using categories to organize, store, and transmit information" "requires
no user intervention." Id. Appellants contend that the analysis used "to
determine whether information is stored or transmitted" and whether a
student is referred to the system is "human analysis," and that the system
cannot transmit data without a determination by the coordinator (i.e., human
analysis) whether there is a need and whether that need can be addressed.
Id. at 16-17. Thus, Appellants argue, because of the human analysis
required to perform the claimed method, the claimed invention "is not an
abstract idea." Id. at 16-17.
Appellants' argument is not well founded. It is well established that
mental processes are abstract ideas and are not patent-eligible subject matter.
See Gottschalk v. 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)); 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."); Cy her Source Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under§ 101."). Thus, the fact that human analysis is
required to perform the claimed method does not "point ... to patent
eligibility" as Appellants contend (Appeal Br. 17). See Ans. 2-3 (noting that
"use of a human to perform analysis" is an abstract idea, not patent-eligible
subject matter).
For the above reasons, Appellants do not apprise us of error in the
Examiner's determination that claims 25--40 are directed to an abstract idea.
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Step Two: Is There an Inventive Concept?
The Examiner determines that claims 25--40 include "limitations that
are directed to a computer, a database[,] and a processor," and "takes the
position that these limitation[ s amount to] nothing more than the
implementation of the abstract idea ... in a generic computer that is well
understood and conventional." Final Act. 5. The Examiner determines that
the method of claims 25--40 is implemented "without the use of [a]
particular machine[,] but rather can be implemented in a generic
computer/computer component." Id. The Examiner also determines that the
claims do not "include any improvement to another technology or technical
fields." Id. at 5-6. Thus, the Examiner determines that "the limitations of
claims 25--40 do not include additional elements that amount to significantly
more than the judicial exception." Id. at 6.
Appellants argue that their claims provide "the connection of persons
without any relationship to each other for the purposes of the student" and,
unlike previous methods of identification, "an interface for communication
and connection between persons who would otherwise never be aware of
one another." Appeal Br. 20. Appellants point in particular to the
limitations in claims 25, 26, and 32 relating to synchronizing access to the
communications and information in the system by the coordinator and
members of the Circle of Care and allowing "instantaneous connection of
instructors within the institution." Id. at 21. Appellants submit that these
limitations provide "the ability to access the system from multiple machines
to input data that is then accessible" by people in a variety of environments,
including the home, office, or other settings. Id.
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This argument is not persuasive. Storing information, such as
communications, input by different people from different locations and
making it is accessible to people at other locations are among the most basic
functions of databases and computer networks, and do not constitute an
inventive concept. "[G]eneric computer components such as an 'interface,'
'network,' and 'database"' "do not satisfy the inventive concept
requirement." Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1324--25 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (stating that receiving and
sending information over a network is "not even arguably inventive");
Accenture Global Servs. GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1344--45 (Fed. Cir. 2013) (database components did not make claims patent-
eligible ).
Appellants analogize their claimed method to the claims in DDR
Holdings LLC v Hotels.com LP, 773 F.3d 1245 (Fed. Cir. 2014). In
particular, Appellants assert that "the present invention uses the internet in a
way previously unknown to academic communities," in that it allows "a vast
array of persons to centrally communicate concerns about a student who is
not suffering academically." Appeal Br. 24. Appellants also argue that their
system allows a "plethora of diverse data on the student, their relationships,
and needs" and allows comparison with thousands of other students, as well
as "rapid review of its own efficacy." Id. at 24--25. Appellants contend that
"those metrics, if provided manually, would lose all of their weight as too
much time would pass in getting the metrics for administrators to be able to
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effect policies to address trends in student need." Id. at 24. Appellants
provide Declarations by Matt Boisvert2 to support these points. Id.
The Boisvert Declarations, and Exhibits A and B attached thereto, are
essentially reports on testimonials from educational institutions touting
benefits of the "Pharos 3 60" product marketed by Pharos Resources
( assignee of the present application and real party in interest identified in the
present appeal). See Boisvert Deel. I ,r,r 1-7; Boisvert Deel. II ,r,r 1, 12-14.
According to the Boisvert Declarations, "Pharos 3 60" is "the product of the
invention." Boisvert Deel. I ,r 1; Boisvert Deel. II ,r 1. However, Appellants
do not provide sufficient details of the "Pharos 360" product to establish
how closely it corresponds to the claims before us on appeal, much less
whether any of the purported benefits result from claimed features of the
invention. The benefits alluded to in the Declarations and Exhibits include
helping quickly provide connections for students and access to information
that would facilitate advising sessions with students (Boisvert Deel. I ,r 5;
Exhibit A); improved student retention rates (Exhibit A); providing a holistic
approach in which faculty, staff, peers, and parents are joined in a network,
or "hub," to identify at-risk students proactively to create a supportive and
caring environment to ensure no student struggles alone (Exhibit B, p. 2);
the ability to access the "Pharos 360" system, with a secure login using
Abilene Christian University's single sign-on authentication system, "to aid
2 Appellants submitted a Declaration by Matt Boisvert dated November 20,
2014 (hereinafter "Boisvert Declaration I" or Boisvert Deel. I"), as well as a
second Declaration by Matt Boisvert dated May 5, 2015 (hereinafter
"Boisvert Declaration II" or "Boisvert Deel. II"), both of which were
accompanied by Exhibits A, B, and C.
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in the immediacy of referrals being submitted and received" (id.); and an
increase in referrals over a four-year period (id. at 3).
In short, Appellants assert that the claimed invention results in
supportive networks being established at universities to assist students and
at-risk students being identified and referred for assistance earlier (before
academic performance is affected), leading to more effective and timely
counseling and improved student retention rates. These benefits, however,
reside in the mental processes (i.e., "human analysis") performed by
university administrators/coordinators, counselors, faculty, and staff to (1)
identify individuals in a "Circle of Care" who could potentially provide
input regarding a student's well-being or counseling and support, (2) refer a
student for consideration of assistance or counseling upon observing changes
in the student, (3) determine whether the referred student is in need of
assistance that could be provided, and ( 4) decide what type of assistance is
needed and at what point the issue has been resolved. For example, the keys
to the success of the method reside in the decision ( the mental process) to
intervene early when changes are observed in a student, before academic
performance is affected, and in the identification of individuals who would
be in a position to observe or support the student. Although computer
components and software are used to communicate and record these mental
processes, the method does not improve the functioning of the computer
components themselves, or improve any other technology. As the Federal
Circuit made clear in Two-FVay lvfedia Ltd. v. Comcast Cable
Communications, the improvement must be a technical one. See Two-Way
Media Ltd. v. Comcast Cable Comm., LLC, 874 F.3d 1329, 1338-39 (Fed.
Cir. 2017) (stating that reciting an abstract idea performed on generic
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computer and network components that operate according to their ordinary
functions does not contain an inventive concept).
Appellants' attempt to analogize their claimed method to the claims in
DDR is unavailing. The claims at issue in DDR address a specific problem
of retaining website visitors who would otherwise be transported away from
the host website after clicking on an advertisement on the host website and
activating a hyperlink. DDR, 773 F.3d at 1257. The DDR claims call for a
web server that "directs the visitor to an automatically-generated web page
that combines visual 'look and feel' elements from the host website and
product information from the third-party merchant's website related to the
clicked advertisement." Id. This permits visitors "to purchase products
from the third-party merchant without actually entering that merchant's
website." Id. at 1258. Thus, the solution set forth in the DDR claims was
determined to be "necessarily rooted in computer technology in order to
overcome a problem arising in the realm of computer networks." DDR, 773
F.3d at 1257.
Appellants' claimed method provides multiple parties access to an
information database into which information may be input, stored, and
viewed. Unlike the claims in DDR, Appellants' claims do not recite any
specific or inventive way of providing the parties access to the information
database to input or view information or solve any problem arising in the
realm of computer networks. The aspects of Appellants' claimed invention
identified by Appellants as purportedly being inventive pertain to the parties
accessing the database and the information entered into and stored on the
database. These aspects do not relate to any problem arising in the realm of
computer networks. The database and computer network used to implement
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the claimed method perform their functions in the same manner regardless of
what information is stored and which users access the information.
Appellants' arguments regarding the ability to immediately access and
review the data and communications stored on the system, and assess the
efficacy of the system (see Appeal Br. 24--25) are not persuasive. Although
the use of the computer elements ( computers, database, and network) may
improve the efficiency of student support services efficacy analysis and
speed up communications within the support network, "merely adding
computer functionality to increase the speed or efficiency ... does not
confer patent eHgibility on an otherwise abstract idea." Intellectual Ventures
I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); see
also LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 997 (Fed. Cir.
2016) (holding ineligible claims to a computerized method of speeding up a
loan-application process). Moreover,
[i]n order for the addition of a machine to impose a meaningful
limit on the scope of a claim, it must play a significant part in
permitting the claimed method to be performed, rather than
function solely as an obvious mechanism for permitting a
solution to be achieved more quickly, i.e., through the
utilization of a computer for performing calculations.
SiRF Technology Inc. v. ITC, 601 F.3d 1319, 1333 (Fed. Cir. 2010).
Appellants also argue that the claimed system allows for immediate
sorting (such as classification by major, GPA, race, etc.) of profiles of
students who have been served by the system to correlate prevalent needs
with student profiles to permit the community to adapt to those needs and
address issues proactively. Appeal Br. 25. This argument is not convincing.
"[T]he idea of collecting information in classified form, then separating and
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transmitting that information according to its classification, is an abstract
idea that is not patent-eligible." Cyberfone, 558 F. App'x at 992.
Appellants assert that their invention "represents an immense
improvement in a technological field," namely, "in the field of data
gathering and connectivity (triangulation between otherwise unrelated
parties)." Appeal Br. 25. Appellants contend that implementation of the
claimed invention "allows a user to view and assess information not
previously available by any other manual or software systems and make that
information available to other relevant persons." Id. at 26. Appellants do
not point to any improvement or advance in the way in which information is
stored, retrieved, or transmitted by the computer, or any other technology,
but, rather, assert an improvement in the content of the information that is
gathered and transmitted. The idea (mental process) of collecting and
sharing particular information is a patent-ineligible concept, as discussed
above.
Appellants cite the Boisvert Declarations as "demonstrating the
success and marvel by users at the improvements in statistics [ at academic
institutions on retention rates of students in need and the success of their
counseling programs] not previously known." Id. Even assuming that the
collection and sharing of the particular information reflected in Appellants'
claims may be "groundbreaking," "that is not enough for [patent]
eligibility." SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1018 (Fed. Cir.
2018). An abstract idea is not patent-eligible, "no matter how
groundbreaking the advance." Id. at 1024.
Appellants contend that the method of claims 25--40 "is similar to that
of [BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
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1341 (Fed. Cir. 2016)] and should be seen as a 'method of organizing human
behavior.'" Reply Br. 5. To the extent that Appellants urge that claims 25-
40 are patent-eligible because they are directed to a method of organizing
human behavior, this position is unsound. Our reviewing court has "applied
the 'abstract idea' exception to encompass inventions pertaining to methods
of organizing human activity." In re TL! Communications LLC Patent
Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016) (citing Intellectual Ventures I,
792 F.3d at 1367).
Appellants argue that execution of the method of claims 25--40
"without computer implementation, like the prior art in [BASCOM], would
be cumbersome and ineffectual," and that, like the claims in BASCOM,
"claims 25--40 disclose a method that was not understood, routine, or
conventional prior to [Appellants'] application." Reply Br. 5. This
argument is not persuasive. As discussed above, "merely adding computer
functionality to increase the speed or efficiency ... does not confer patent
eligibility on an otherwise abstract idea." Intellectual Ventures I, 792 F.3d
at 1370.
The court in BASCOM explained that, even in claims reciting only
"generic computer, network and Internet components, none of which is
inventive by itself," "an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces"
under step two of the Alice framework. BASCOM, 827 F.3d at 1349-50.
The inventive concept recited in the claims in BASCOM was "the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user," giving "the
filtering tool both the benefits of a filter on a local computer and the benefits
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of a filter on the ISP server." Id. at 1350. Further, the patent in BASCOM
"describes how its particular arrangement of elements is a technical
improvement over prior art ways of filtering such content," which "were
either susceptible to hacking and dependent on local hardware and software,
or confined to an inflexible one-size-fits-all scheme." Id. (emphasis added).
Thus, "the claims [in BASCOM] may be read to 'improve[] an existing
technological process."' Id. at 1351 (citing Alice, 573 U.S. at 222-224). By
"providing individualized filtering at the ISP server," the invention recited in
the BASCOM claims "represents a 'software-based invention[] that
improve[s] the performance of the computer system itself."' Id. at 1351. By
contrast, the method of claims 25--40 before us in this appeal do not improve
the performance of the computer system used to implement the method. As
discussed above, the computers, database, and network used to implement
the claimed method receive, store, classify, and transmit data in their normal,
expected manner. The claimed method does not represent an improvement
in the technology itself.
For the above reasons, the recited elements of claims 25--40,
considered individually and as an ordered combination, do not constitute an
"inventive concept" that transforms the claims into patent-eligible subject
matter. See Alice, 573 U.S. at 217. Accordingly, we sustain the rejection of
claims 25--40 under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter.
DECISION
The Examiner's decision rejecting claims 25--40 is AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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