International Business Machines Corporation

Patent Trials and Appeals Board

Nov 2, 2020

2019005617 (P.T.A.B. Nov. 2, 2020)

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.
15/223,892 07/29/2016 Donna K. Byron AUS920160230US1 1089
65362 7590 11/02/2020
TERRILE, CANNATTI & CHAMBERS, LLP
IBM Austin
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
11/02/2020 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):
USPTO@dockettrak.com
tmunoz@tcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DONNA K. BYRON, CARMINE M. DIMASCIO,
BENJAMIN L. JOHNSON, JACQUELYN A. MARTINO, and
FLORIAN PINEL
____________

Appeal 2019-005617
Application 15/223,892
Technology Center 3700
____________
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
MICHAEL L. WOODS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s invention is computer software that assesses a user’s skill
and recommends instructional content to the user. Spec. ¶ 1. Claim 7,
reproduced below, is illustrative of the subject matter on appeal.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies International Business Machines
Corporation as the Applicant and real party in interest. Appeal Br. 1.
Appeal 2019-005617
Application 15/223,892
2
7. A system comprising:
a processor;
a data bus coupled to the processor; and
a computer-usable medium embodying computer program
code, the computer-usable medium being coupled to the data bus,
the computer program code used for assessing requisite skills to
recommend instructional content to a user and comprising
instructions executable by the processor and configured for:
receiving a corpus of instructional content to a knowledge
manager of a Question/Answer (QA) system, the corpus of
instructional content comprising a collection of content that
provides a description of how to do something;
parsing the corpus of instructional content to generate
features associated with individual skills referenced in the
corpus of instructional content, each individual skill comprising
a combination of an action, a recipient of the action and a tool
used to perform the action, each feature associated with the
individual skills referenced in the corpus of instruction content
comprising at least one of a phoneme, syllable, letters, words,
base pairs, term frequency, term length and term position;
receiving a corpus of user skills content associated with a
user, the corpus of user skills content comprising a collection of
content that contains a reference to a degree of competency of
the user as it relates to a particular skill;
parsing the corpus of user skills content to generate features
associated with individual skills referenced in the corpus of user
skills content, each feature associated with the individual skills
referenced in the corpus of user skills comprising at least one of
a phoneme, syllable, letters, words, base pairs, term frequency,
term length and term position;
using the features to cross-reference individual instances of
instructional content that contain at least one skill associated
with the user; and,
providing an output response via the QA system based upon
the cross-reference of the individual instances of instructional
content, the output response comprising recommended
instructional content relating to the degree of competency of the
user for the particular skill.
Appeal 2019-005617
Application 15/223,892
3
OPINION
Appellant argues all pending claims as a group. Appeal Br. 4. We
select claim 7 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the courts recognize certain judicial exceptions to Section 101,
namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71
(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
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo, 566 U.S.
at 72–73). According to the Supreme Court’s framework, we 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.
In situations where an abstract idea is implemented on a computer, the
first step in the Alice/Mayo analysis asks whether the focus of the claims is
on a specific improvement in computer capabilities or, instead, on a process
that qualifies as an “abstract idea” for which computers are invoked merely
as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016).
Appeal 2019-005617
Application 15/223,892
4
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.”’
Alice, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S.
at 72). Where the claim is directed to an abstract idea that is implemented
on a computer, merely stating the abstract idea while adding the words
“apply it” is not enough to establish such an inventive concept. See Alice,
573 U.S. at 223.
[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 224.
Under the PTO’s guidelines, in conducting step one of the Alice
framework, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (the “Guidelines”).
In other words, under prong 1 of an abstract idea analysis, we look to
whether the claim recites an abstract idea. Then, if it does, under prong 2,
we look at the claim, as a whole, and determine whether the claim is
“directed to” the abstract idea or, instead, is “directed to” a “practical
application” of the abstract idea.
Appeal 2019-005617
Application 15/223,892
5
Step 1, Prong 1
The Guidelines identify three key concepts identified as abstract
ideas: (a) mathematical concepts including “mathematical relationships,
mathematical formulas or equations, mathematical calculations”;  (b) certain
methods of organizing human activity, such as “fundamental economic
principles or practices,” “commercial or legal interactions,” and “managing
personal behavior or relationships or interactions between”; and (c) mental
processes including “observation, evaluation, judgment, [and] opinion.”
Guidelines, 84 Fed. Reg. at 52.
With respect to the first step, the Examiner determines that the claims
are directed to an abstract idea. Final Act. 3. According to the Examiner,
the steps are directed to an abstract in the form of a series of mental steps for
organizing or analyzing information in a way that can be performed
mentally. Id. at 4.
Appellant argues, in cursory and conclusory fashion, that claim 7 does
not recite an abstract idea. Appeal Br. 4. Appellant’s entire argument on
this issue consists of a single paragraph that is reproduced below.
It is respectfully submitted that the claims do not recite
matter that falls within one of the enumerated groupings of
abstract ideas set forth in the Revised Patent Subject Matter
Eligibility Guidance effective January 7, 2019. Specifically,
the claims do not per se recite mathematical concepts, methods
of organizing human activity or mental processes.
Id. In response, the Examiner reiterates that the claim is directed to a mental
process under the Guidelines. Ans. 7. In reply, Appellant merely repeats,
more or less verbatim, the claim limitations and then states that the system
uses an information processing system that includes a hardware processor.
Reply Br. 2. Appellant concludes that, therefore, the claims include more
Appeal 2019-005617
Application 15/223,892
6
than a per se recitation of mathematical concepts, methods of organizing
human activity, or mental processes under the Guidelines.
There is little question here that claim 7 recites an abstract idea.
“Information as such is an intangible.” Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Courts treat collecting
information, as well as analyzing information by steps people go through in
their minds, as essentially mental processes within the abstract-idea
category. FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093
(Fed. Cir. 2016). The claims here relate to comparing information relating
to a person’s skills to information relating to instructional content. Claims
App. The results of such comparison and analysis produce a
recommendation that is then displayed (“output”). Id. This is fundamentally
the same process that instructors go through in their minds in deciding how
to teach students. As such, the method recites a “mental process” type of
abstract idea under the principles espoused in FairWarning and our
Guidelines.
Step 1, Prong 2
Under Prong 2 of Step 1 of the Guidelines, we do not assume that
such claims are directed to patent ineligible subject matter because “at some
level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas’.” In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (quoting Alice). Instead,
“the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea, the inquiry ends.
Appeal 2019-005617
Application 15/223,892
7
Guidelines. If the claims are “directed to” an abstract idea, then the inquiry
proceeds to the second step of the Alice framework. Id.
Consequently, we consider whether the claimed skill assessment
system includes additional elements that integrate the judicial exception into
a practical application. A claim that integrates a judicial exception into a
practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception. Guidelines.
Here, Appellant argues that the claims are directed to a “practical
application.” Appeal Br. 4. Appellant’s entire argument on the matter is
reproduced below.
[T]he claims are directed to a practical application. More
specifically, the claims are generally directed to the practical
application of assessing requisite skills to recommend
instructional content to a user via a Question/Answer system.
Id.
Although automating tasks that humans are capable of performing
may be patent eligible if properly claimed (see McRO, 837 F.3d at 1313), we
are not persuaded the Appellant presents a practical application that is
analogous to McRO. Here, claim 7 generally recites six functional steps,
namely: (1) receiving, (2) parsing, (3) receiving, (4) parsing, (5) cross-
referencing; and (6) providing an output. Claims App. The system collects
and processes information in much the same manner that a human instructor
goes through in choosing educational curriculum for a student.
The prospect that Appellant’s method uses a computerized “tool” does
not render the claims less abstract. An abstract idea does not become non-
Appeal 2019-005617
Application 15/223,892
8
abstract by limiting the invention to a particular technological environment.
Intellectual Ventures I, 792 F.3d at 1367; see also Affinity Labs of Texas,
LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (Merely
limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract); see
also Alice, 573 U.S. at 224 (the fact a computer exists in the physical realm
is beside the point). Unlike Enfish, the focus of the instant claims is not on
improving a computer, but rather on a process for which computers are
invoked merely as a tool. See Enfish, 822 F.3d at 1335–36.
Appellant demonstrates a fundamentally incorrect understanding of
what it means for an idea to be integrated into a “practical” application. A
computer may be able to calculate that two plus two equals four after being
programmed with software that performs arithmetic. Although someone
may consider it more practical to use a computer to calculate a sum instead
of doing it manually with pencil and paper, the fact that the software now
enables the computer to add two plus two when it could not have done so
without the software, does not, under our Guidelines, establish that the
software is a “practical” application. The notion that implementation of
Appellant’s method may result in more efficient selection of instruction
material for a student does not render the claim any less abstract. See
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (explaining that performance by computer
of operations that previously were performed manually, albeit less
efficiently, does not convert an abstract idea into eligible subject matter).
To illustrate what is required for an invention to be “integrated” into a
“practical application,” we reversed an Examiner’s Section 101 rejection in
Appeal 2019-005617
Application 15/223,892
9
the case of Ex Parte Hladio, 2019 WL 2285538 (PTAB April 29, 2019). In
that case, the inventor used sensor and computer technology to improve a
surgical procedure that entailed navigation and alignment of a surgical tool
and a patient’s bone. Id. We noted that both the bone and the surgical tool
were physical real world tangible items. Id. We further noted that the
invention was directed to improving the performance and outcome of the
surgical procedure as a result of improved bone-tool alignment. Id. We
reversed the Examiner in that case because, although the claims recited an
abstract idea, the idea was integrated into an application that was “practical.”
Id. In contrast, Appellant selecting instructional material based on skill
assessment of a student falls short of the standard of “practical application”
required by the Guidelines.
The claims, thus, fail to integrate the judicial exception into a practical
application and, therefore, are “directed to” an abstract idea.
Step 2
Turning to step 2 of the Alice/Mayo analysis, we look more precisely
at what the claim elements add in terms of whether they identify an
“inventive concept” in the application of the ineligible matter to which the
claim is directed. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018). “A claim that recites an abstract idea must include
‘additional features’ to ensure ‘that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea].’” Alice, 573 U.S. at 221
(quoting Mayo, 566 U.S. at 77–78). Those “additional features” must be
more than well-understood, routine, conventional activity. Mayo, 566 U.S.
at 79.
Appeal 2019-005617
Application 15/223,892
10
Under step two of the Alice/Mayo framework, the Examiner
determines that the claims merely recite that the method is computer
implemented. Final Act. 5. “These limitations represent no more than mere
instructions to implement the abstract idea using a computer, which is not
sufficient to direct the claims to significantly more.” Id. Appellant’s briefs
do not mention, much less argue, step two of the Alice/Mayo analysis. See
generally Appeal Br., Reply Br. Thus, Appellant does not identify a single
element in the claim that purportedly amounts to more than what is well-
understood, routine, or conventional. Id. To be clear, it is not that we
disagree with Appellant as to whether certain elements are well-understood,
routine, or conventional. Here, Appellant does not identify any elements in
the claim, individually or as an ordered combination, as providing an
inventive concept.
Appellant’s Specification describes the information processing system
used in the invention in the following terms.
Types of information processing systems that can utilize QA
system 100 range from small handheld devices, such as
handheld computer/mobile telephone 110 to large mainframe
systems, such as mainframe computer 170. Examples of
handheld computer 110 include personal digital assistants
(PDAs), personal entertainment devices, such as MP3 players,
portable televisions, and compact disc players. Other examples
of information processing systems include pen, or tablet,
computer 120, laptop, or notebook, computer 130, personal
computer system 150, and server 160. As shown, the various
information processing systems can be networked together
using computer network 140. Types of computer network 140
that can be used to interconnect the various information
processing systems include Local Area Networks (LANs),
Wireless Local Area Networks (WLANs), the Internet, the
Public Switched Telephone Network (PSTN), other wireless
networks, and any other network topology that can be used to
Appeal 2019-005617
Application 15/223,892
11
interconnect the information processing systems. Many of the
information processing systems include nonvolatile data stores,
such as hard drives and/or nonvolatile memory. Some of the
information processing systems may use separate nonvolatile
data stores.
Spec. ¶ 34. There is no indication in the Specification that Appellant has
achieved an advancement or improvement in computer processing or display
technology. See generally Spec.
All of the data processing, sensing, and input-output devices, as well
as their interconnections, are described at a high level of generality that
presumes familiarity on the part of the reader. Id. Appellant is required to
submit a specification that contains a written description of the invention in
“full, clear, concise, and exact terms.” 35 U.S.C. § 112(a). For purposes of
the Alice/Mayo analysis, a specification demonstrates the well-understood,
routine, conventional nature of step 2 “additional elements” when it
describes them in a manner that indicates they are sufficiently well-known
that they need not be described with particularity to satisfy 35 U.S.C.
§ 112(a). That is the case here.
Essentially, all Appellant has done here is create a system for
“collecting information, analyzing it, and displaying certain results of the
collection and analysis.” Elec. Power Grp., 830 F.3d at 1353. Appellant’s
method recites an “abstract idea” for which computers are invoked merely as
a tool. Enfish, 822 F.3d at 1335–36. In short, claim 7 is directed to an
abstract idea that is implemented on a computer in a manner that merely
states the abstract idea while adding the words “apply it.” See Alice, 573
U.S. at 223. This is not sufficient for patent eligibility. Id.
Accordingly, for the above reasons, the recited elements of claim 7,
considered individually and as an ordered combination, do not constitute an
Appeal 2019-005617
Application 15/223,892
12
“inventive concept” that transforms claim 7 into patent-eligible subject
matter. On this record, we affirm the Examiner’s Section 101 rejection of
claims 1–20.
CONCLUSION
Claims
Rejected
§ Reference(s)/Bases Affirmed Reversed
1-20 101 Judicial Exception to
Eligible Subject Matter
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)(1)(iv).
AFFIRMED