International Business Machines Corporation

Patent Trials and Appeals Board

May 27, 2021

2020006023 (P.T.A.B. May. 27, 2021)

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.
15/823,337 11/27/2017 Kelly A. Argyros SVL920170085US1_8150-0936 2015
112978 7590 05/27/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
WAESCO, JOSEPH M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/27/2021 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KELLY A. ARGYROS,
MICHAEL A. DAWSON,
DANIEL J. FERRANTI,
ANDREW R. FREED, and
ANDREW S. H. TING
__________

Appeal 2020-006023
Application 15/823,337
Technology Center 3600
____________

Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellant1 has filed a Request for Rehearing (“Request”) of the
Decision on Appeal (mailed Feb. 25, 2021; “Decision”) pursuant to
37 C.F.R. § 41.52(a)(4).2 Request 1 (“Appellants will argue that the
Decision contains an undesignated new ground of rejection.”).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ l.42(a). Appellant identifies IBM Corporation as the real party in interest.
Appeal Br. 1.
2 “New arguments that the Board's decision contains an undesignated new
ground of rejection are permitted.”
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In the Decision, the Board
1. affirmed the rejection of claims 1–20 under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter without
significantly more; and,
2. reversed the § 103 rejections of claims 1–20 as being unpatentable
over the combinations of Lawrence and Monk, II.
The Request concerns only the § 101 rejection.
DISCUSSION
We have carefully reviewed the arguments set forth in the Request
and for the following reasons we are persuaded to denominate the
affirmance of the § 101 rejection in the Decision as a new ground of
rejection.
It is true, as Appellant argues, that the Board presented more analysis
than the Examiner. Request 4.
Appellant points to our claim construction analysis – something the
Examiner did not provide. Id.
That alone is an insufficient basis for arguing that the thrust of our
decision differs substantially from that of the Examiner. This is so because
“claim construction is not an inviolable prerequisite to a validity
determination under § 101.” Bancorp Servs., L.L.C. v. Sun Life Assurance
Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012). The claim construction
analysis was an effort on our part to ascertain the basic character of the
subject matter that is claimed and confirm that the Examiner’s
characterization of what the claims are directed to was accurate. Here “the
determination of patent eligibility require[d] a full understanding of the basic
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character of the claimed subject matter.” Id. at 1273–74. Only then could we
decide, as a matter of law, “whether claim 1 is directed to an abstract idea.
Specifically, is claim 1 directed to organizing and tracking information
(Examiner) or an improvement to technology (Appellant)?” Decision 5.
Appellant also argues that, given our claim construction analysis, our
characterization of what claim 1 is directed to (“a scheme for evaluating
information associated with a business entity's production system to make it
more relevant”; Dec. 10) differs substantially from the Examiner’s
characterization. “Appellants’ review of both the appealed Second Office
Action and Examiner’s Answer finds no mention of the phrase ‘[e]valuating
information for a business entity.’” Request 6 (emphasis omitted).
The fact that the Board has articulated a characterization of what
claims are directed to that is different from that presented by the Examiner is
not dispositive. See Decision 11–12, quoting Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1241 (Fed. Cir. 2016) (“The Board’s slight revision of its
abstract idea analysis does not impact the patentability analysis.”)
But we agree that in this case our characterization departs from that of
the Examiner in the Final Action in a significant way. We looked more
closely for claim language that could support Appellant’s argument that the
claim is directed to an improvement in computer functionality. As a result,
our characterization includes a consideration of the technical nature of the
claimed steps “receiving . . . natural language feed [(NLP)] including data
that is representative of parameters and quantitative data from government
or regulatory body data sources”; “parsing . . . the natural language feed . . .
for features that correspond to a production system”; and, “converting . . .
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the parsed natural language feed into software functions.” See e.g., Dec. 7.
Rather than simply concluding that such language is generic and mentally-
performable, we went into the Specification to see exactly how, for example,
the NLP is parsed. Decision 12–13. This put a technical spin on our
characterization that is not as apparent from the characterization “organizing
and tracking information” provided by the Examiner. Our particular
characterization then formed the basis for our determination under step one
of the Alice framework that the claim as a whole is directed to an abstract
idea and not to an improvement to technology. Dec. 14–15. Such a
technically-based analysis changes the thrust of the Examiner’s reasoning, to
which Appellant should be given a new opportunity to respond. See In re
Stepan Co., 660 F.3d 1341, 1343 (Fed. Cir. 2011) (“the appellant has not had
a full and fair opportunity to litigate the Board’s actual basis of rejection.”)
Accordingly, we denominate the affirmance of the § 101 rejection in
the Decision as a new ground of rejection.
We are not, however, persuaded to change our decision affirming the
§ 101 rejection.
The Request includes a section entitled “an act that can be performed
manually” (Request 8), referring to several instances in which the Board
construed certain claimed steps and concluded that they “can be performed
manually” (Dec. 7).
The Request begins by observing that both the 2019 Revised Patent
Subject Matter Eligibility Guidance and the subsequent Update “are silent as
to relevance of operations that can be performed manually.” Req. 9.
Similarly, Appellant points out that the MPEP provides only “[o]ne example
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indicat[ing] that [a manual operation] may not be sufficient to show an
improvement to computer-functionality.” Id. at 10.
But these observations are consistent with the law on patent–
eligibility; that is, the test for patent–eligibility is not whether claimed
subject matter can be manually performed or not. It is certainly not what we
were implying.
In the step one analysis, where we addressed the “directed to” inquiry,
we provided a claim construction analysis in order to resolve the dispute
over “whether claim 1 is directed to an abstract idea. Specifically, is claim 1
directed to organizing and tracking information (Examiner) or an
improvement to technology (Appellant)?” Dec. 5.
Appellant emphasized in the briefs that the claims were directed to an
improvement in technology. See Appeal Br. 16–17; for example:
[T]he claimed invention improves over prior artificial intelligence
technology by providing a methodology by which natural language
feeds are converted into software functions, and these software
functions can then be used to calibrate production systems. Thus, the
claimed invention represents an improvement over the prior art
technology and integrates the alleged abstract idea into a practical
application.
Id. at 17.
We construed claim 1, giving it the broadest reasonable construction
in light of the Specification as it would be understood by one of ordinary
skill in the art. Dec. 7–10. We determined therefrom that many of the claim
steps can be performed manually. This was not to imply that the claimed
subject matter was patent–ineligible but to show that the claim as broadly
worded does not reflect Appellant’s technological characterization of what
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the claim is “directed to.” The “Technical Improvement” section of the
Decision goes into even more detail. See Dec. 11–15.
Appellant further argues that the claim steps we concluded could be
performed manually “involve operations that have [not] previously been
performed manually.” Req. 10.
Additionally, conversion of a particular type of data structure (i.e., the
parsed natural language feed) into functional computer code (i.e., the
software functions) is also something that has never been performed
without a computer or some type of technology. Finally, the claimed
“calibrating ... the production system by updating a data library using
the software functions” is also necessarily performed by a computer and
has never been performed without a computer.
Id. at 11. We are unpersuaded.
Setting aside that there is at present insufficient evidence to support it,
the argument is a new one. For example, Appellant equates “software
functions” (claim 1) to “functional computer code” (id.). But the record
before us at the time of the Decision supported construing “software
functions” as information, not necessarily code. See Dec. 7:
The third step calls for "converting ... the parsed natural language
feed into software functions." According to the Specification, "software
functions" include "software input or instructions." Para. 29. In light of
the Specification, we reasonably broadly construe the "software
functions" as encompassing an input of a type of information.
Had the record evidenced that the claim steps must necessarily be performed
by a computer, we may have reached a different outcome. We could not,
however, have misapprehended or overlooked such an argument because it
was not before us.
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Finally, in the section titled “calibrating ... the production system by
updating a data library using the software functions and integration
information from the data library with the production system,” Appellant
makes a similar argument: “The Board's conclusion that ‘this is a step that
can be accomplished manually’ is both factually unsupported and simply
wrong.” Req. 12.
Appellant construes “data library” (claim 1) to be a “computer data
structure.” Id. (“The updating of a data library (i.e., a computer data
structure). . .”) But that is not reflective of the record before us at the time of
the Decision. As we stated,
The Specification does not expressly define the phrase “data
library” but in describing the calibrating process, it appears to refer to
a collection of information associated with an entity’s operation. See,
e.g., para. 4 (“According to one embodiment, calibrating said
production system further comprises calculating, by said data
processing system, an aggregate risk score for an entity based on said
risk weights and ratings. Natural language feed may include data
selected from the group consisting of files, data records, tables, and
documents.”) The Specification describes calibrating by updating a
collection of information and integrating information from said
collection with an entity’s production system as, inter alia, a way of
identifying potential issues. Para. 30.
Dec. 8. There was no argument or supporting evidence before us that would
have led us to understand the calibrating step involved updating a computer
data structure. Without that, we could not have misapprehended that the
calibrating step “necessarily requires the use of a computer.” Req. 12.
We are unpersuaded by the argument that “the claim language is
directed to the transformation of a specific article (i.e., a production system)
from one state (i.e., prior to calibration) to another state (i.e., a calibrated
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state)” (Req. 12). Given the record, whereby we reasonably broadly
construed “data library” as a “collection of information associated with an
entity’s operation” (Dec. 8), we do not see how calibrating by updating
information transforms the collection.
Again, had the record supported interpreting “data library” (claim 1)
to mean “computer data structure” or otherwise evidenced that the claim
calibration step must necessarily be performed by a computer, we may have
reached a different outcome. In that circumstance, Appellant’s argument that
the claimed subject matter is an improvement in technology may have been
persuasive. In that regard, our citation to Trading Techs. Int'l, Inc. v. IBG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) may not have been relevant.
However, we could not have misapprehended or overlooked such an
argument because it was not before us.
For the foregoing reasons, we maintain that claims 1–20 are directed
to judicially-excepted subject matter without significantly more and,
therefore, that they should remain subject to a rejection under 35 U.S.C.
§ 101 as patent-ineligible. Albeit we maintain our Decision to affirm the
§ 101 rejection of the claims, we denominate the affirmed rejection as a
NEW GROUND OF REJECTION.

DECISION SUMMARY
Outcome of Decision on Rehearing:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Denied Granted
1–20 101 Eligibility 1–20

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Final Outcome of Appeal after Rehearing:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–20 101 Eligibility 1–20 1–20
1–20 103(a) Lawrence,
Monk, II
1–20
Overall
Outcome
1–20 1–20

NEW GROUND
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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).

GRANTED
37 C.F.R. § 41.50(b)