Ex Parte Zilberberg et al

Patent Trial and Appeal Board

Nov 16, 2018

14071229 (P.T.A.B. Nov. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/071,229 11/04/2013
11764 7590 11/20/2018
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 305
Alexandria, VA 22314
FIRST NAMED INVENTOR
Konstantin Zilberberg
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.
P7521USOO 1966
EXAMINER
MCGHEE, TRACY M
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
11/20/2018 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KONSTANTIN ZILBERBERG, JIALING LI, and TAO WU
Appeal2018-001798
Application 14/071,229
Technology Center 2100
Before ST. JOHN COURTENAY III, BETHZ. SHAW, and
JOYCE CRAIG, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-20, which represent all the pending
claims. Claims 21--48 are cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Throughout this Decision we have considered the Appeal Brief filed June
5, 2017 ("App. Br."), the Reply Brief filed December 4, 2017 ("Reply Br."),
the Examiner's Answer mailed October 5, 2017 ("Ans."), and the Final
Rejection mailed December 23, 2016 ("Final Act.").
2 Appellants identify HERE Global B.V. as the real party in interest. App.
Br. 1.
Appeal2018-001798
Application 14/071,229
INVENTION
Appellants' invention is directed to calculating trust levels for data
sources. Spec. ,r 2.
Claim 1 is illustrative of the claims at issue and is reproduced below:
1. A method of collecting data from a categorized
data source, the method comprising:
a receiving of one or more extracted data from a plurality
of data sources;
a comparing of the received one or more extracted data
with one or more other data;
at least one determination, based on the comparing, of
one or more attributes associated with extracting data from the
plurality of data sources, wherein the one or more attributes
relate, at least in part, to a compatibility, quantified based on a
predetermined threshold value, of merging or matching in
determining accuracy or relevancy of data associated with the
plurality of data sources;
a processing of the one or more determined attributes to
cause, at least in part, (a) a ranking of the plurality of data
sources, (b) a calculation of one or more trust levels of the
plurality of data sources, or ( c) a combination thereof,
wherein the ranking and/ or the one or more trust levels
are associated, at least in part, with an accuracy, a relevancy or
a combination thereof of the plurality of data sources;
a categorizing of the plurality of data sources based, at
least in part, on the processing of the one or more determined
attributes; and
a collecting of data from at least one of the one or more
categorized data sources based, at least in part, on the
categorizing, wherein the collecting from the one of the one or
more categorized data sources ensures at least one of increased
relevance of the collected data, increased accuracy of the
collected data or a combination thereof.
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REJECTIONS
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. Final Act. 2-3.
The Examiner rejected claims 1-20 under 35 U.S.C. § I03(a) as
unpatentable over Stephens (US 2005/0235343 Al, Oct. 20, 2005), Luo (US
2011/0022602 Al, Jan. 27, 2011), and Lawrence (US 2006/0004866 Al,
Jan. 5, 2006). Final Act. 4.
CONTENTIONS AND ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's obviousness rejections, and the Examiner's response to
Appellants' arguments. Appellants do not proffer sufficient argument or
evidence for us to find error in the Examiner's findings. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). For at least the reasons
discussed below, we agree with and adopt the Examiner's findings and
conclusions in the Final Action and Answer.
Section 101 Rejection
With respect to claims 1-20, the Examiner concludes these claims are
directed to an abstract idea of collecting and comparing information. Ans. 8,
9; Final Act. 3. The Examiner also finds additional elements recited in these
claims do not amount to significantly more than the abstract idea itself. Id.
According to the Examiner, the claims require no more than mere
instructions to implement the idea on a generic computer. Id.
Appellants contend the Examiner erred because the claims "carve out
an apparatus and method providing a specific way of processing and
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collecting data from different data sources such that the collected data is
associated with increased relevance and accuracy." App. Br. 7.
We do not find Appellants' arguments persuasive. At the outset, we
note the Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
"'abstract ideas' category embodies 'the longstanding rule that '[a]n idea of
itself is not patentable."' Alice, 134 S. Ct. at 2355 (alteration in original)
(quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "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, 77-78 (2012)). The first step in the analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea. Id.
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." Id. (quoting Mayo, 566 U.S. 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. (alteration in original) (quoting Mayo, 566 U.S. at
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Application 14/071,229
72-73). The prohibition against patenting an abstract idea "'cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants' claims are directed to an abstract idea of
collecting and comparing information. Ans. 8. All of the steps in
Appellants' claims, e.g., receiving extract data, comparing extracted data
with one or more other data, making a determination based on the
comparing, categorizing the data, and collecting data are similar to concepts
previously found abstract by our reviewing court. See e.g., Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (the
collection of information and analysis of information are abstract ideas).
Turning to the second step of the Alice inquiry, we find nothing in
Appellants' claims to add anything "significantly more" to transform into a
patent-eligible application the abstract concept of collecting and comparing
information. Alice, 134 S. Ct. at 2357. Appellants do not argue any of the
steps recited in these independent claims are individually inventive.
Limiting an abstract concept of collecting and comparing information
to a general purpose computer having generic components, such as the
"processor" recited in Appellants' claim 11 ( claim 1 does not recite any
computer elements), does not make the abstract concept patent-eligible
under 35 U.S.C. § 101. As recognized by the Supreme Court, "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358; see id. at
2359 ( concluding claims "simply instruct[ing] the practitioner to implement
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the abstract idea of intermediated settlement on a generic computer" are not
patent eligible); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715-16 (Fed. Cir. 2014) ( claims merely reciting abstract idea of using
advertising as currency as applied to particular technological environment of
the Internet are not patent eligible); Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims
reciting "generalized software components arranged to implement an
abstract concept [ of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer" are not
patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed.
Cir. 2012) ("[s]imply adding a 'computer aided' limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible" (internal citation omitted)).
Appellants cite Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 6-7; Reply Br. 3),
but do not persuasively explain why that case is similar to the present case.
In Bascom, the court determined the inventive concept at the pleading stage
and construed in favor of the nonmovant,
The inventive concept described and claimed . . . is the
installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to
each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter
on the ISP server. BASCOM explains that the inventive concept
rests on taking advantage of the ability of at least some ISPs to
identify individual accounts that communicate with the ISP
server, and to associate a request for Internet content with a
specific individual account.
Bascom, 827 F.3d at 1350 (emphasis added).
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The rejected claims are unlike the claims of Bascom because they are
not directed to an "installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user." Id. at 1350. Nor do they "give[] the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server." Id. In fact, the pending claims do not even recite any "ISP server,"
nor does claim 1 recite any computer or sever elements at all. Indeed, the
method of claim 1 could be performed in the human mind. The type of
claimed activity, i.e., collecting and comparing information, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson."). "[A] method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101." Id. at 1373
Because Appellants' claims 1-20 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
these claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
Section 103 Rejection
Appellants argue the Examiner failed to address the following features
of claim 1: "a receiving of one or more extracted data from a plurality of
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data sources;" "a comparing of the received one or more extracted data with
one or more other data;" and "at least one determination, based on the
comparing, of one or more attributes associated with extracting data from
the plurality of data sources." App. Br. 10-12; Reply Br. 3, 4. We disagree.
The Examiner explicitly mapped these claim elements in the Final Action to
the teachings of Lawrence. Final Act. 5.
Appellants also argue Stephens fails to teach any type of determined
attributes, "much less attributes that are determined based on extracted data
from a plurality of data sources." App. Br. 11.
First, our reviewing court has explicitly held that 37 C.F.R. § 41.37
"require[ s] more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art." In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011).
Second, the Examiner relies on Lawrence, not Stephens alone, to
teach "at least one determination" of the "one or more attributes." Final Act.
5. The Examiner relies on Stephens to teach "processing of the one or more
determined attributes to cause, at least in part, (a) a ranking of the plurality
of data sources, (b) a calculation of one or more trust levels of the plurality
of data sources, or (c) a combination thereof." Final Act. 4; Ans. 17. Thus,
Appellants' arguments regarding Stephens's alleged individual shortcomings
in this regard are unavailing, for the Examiner does not rely solely on
Stephens for teaching the one or more determined attribute(s), but rather the
cited prior art collectively.
Moreover, we agree that Lawrence teaches determining at least one
attribute and that Stephens teaches weights and calculations that may be
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used to determine the relative trustworthiness of a website. Ans. 16-17
( citing Stephens ,r 13, Fig. 4). In the absence of sufficient evidence or line
of technical reasoning to the contrary, the Examiner's response is supported
by a preponderance of the evidence, and we find no reversible error.
Therefore, we sustain the§ 103 rejection of claim 1. For the same
reasons, we sustain the § 103 rejections of the remaining pending claims,
which Appellants argue together with claim 1. App. Br. 12. See 37 C.F.R. §
4I.37(c)(l)(iv) ("Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately.").
For these reasons, and for the additional reasons stated in the Final
Office Action and Answer, we sustain the§ 103 rejections of claims 1-20.
DECISION
We affirm the decision of the Examiner rejecting claims 1-20.
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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