Raymond Seetoh

Patent Trials and Appeals Board

May 29, 2020

2019003714 (P.T.A.B. May. 29, 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.
15/147,074 05/05/2016 Raymond Seetoh 2622
139649 7590 05/29/2020
Credenx PTE. LTD.
5001 Beach Road #03-10
Golden Mile Complex
Singapore, 199588
SINGAPORE
EXAMINER
NOVAK, REBECCA R
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
05/29/2020 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 RAYMOND SEETOH
____________

Appeal 2019-003714
Application 15/147,0741
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–24. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We affirm.

1 Appellant identifies Raymond Seetoh as the real party in interest. App. Br.
2.
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THE INVENTION
Appellant states “[t]he present invention relates to a computer-
implemented method for evaluating suitability of an applicant for a team and
a system thereof.” Spec. ¶ [0001] .
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method for evaluating the suitability of
an applicant for a team having at least one team member, the method
comprising:
at least one processor;
at least one data storage;
retrieving a team member reference response for at least one
team member from a reference response database, each team member
reference response from the at least one team member's reference
provider;
wherein the team member reference response comprises a
response to a plurality of questions relevant to the at least one team
member;
wherein response to each question relevant to each team
member comprises a selection of one answer option from amongst
two or more answer options;
generating a team reference data of the team based on the at
least one team member reference response;
wherein team reference data comprise the frequency of
selection for each answer option, or values that are computed from
such frequency;
receiving an applicant reference response from at least one
reference provider;
wherein the applicant reference response comprises a response
from the at least one reference provider to the plurality of questions;
wherein response from each reference provider to each question
comprises a selection of one answer option from amongst two or more
answer options;
generating an applicant reference data based on at least one of
the applicant reference response;
wherein applicant reference data comprise the frequency of
selection for each answer option, or values that are computed from
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such frequency; and
generating a suitability score based on the applicant reference
data and the team reference data, wherein the suitability score
indicates the suitability of the applicant for the team.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
LaPasta et al. US 2005/0033633 A1 Feb. 10, 2005
Busboom et al. US 2006/0053296 A1 March 9, 2006
Monodal el al. US 2015/01611567 A1 June 11, 2015
The following rejections are before us for review.
Claims 7 and 19 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Claims 7 and 19 are rejected under 35 U.S.C. § 112(b) as being
indefinite.
Claims 1–24 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 1–9, 11, 13–21, and 23 are rejected under 35 U.S.C. § 103 as
being unpatentable over LaPasta and Mondal.
Claims 10 and 22 are rejected under 35 U.S.C. § 103 as being
unpatentable over LaPasta, Mondal, and Kleeman.
Claims 12 and 24 are rejected under 35 U.S.C. § 103 as being
unpatentable over LaPasta, Mondal, and Busboom.

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FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 6–11 in the
Final Office Action2 and on pages 6–11 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.

ANALYSIS
35 U.S.C. § 112(f) INTERPRETATION
A claim limitation that includes the term “means” is presumed to be
intended to invoke means-plus-function treatment, i.e., treatment under 35
U.S.C. §112, 6th paragraph. Rodime PLC v. Seagate Tech., Inc., 174 F.3d
1294, 1302 (Fed. Cir. 1999) (“presumed an applicant advisedly used the
word ‘means’ to invoke the statutory mandates for means-plus-function
clauses.”).
Concerning limitations, "member reference normalizing module”
(claim 15), “applicant reference normalizing module” (claim 16) ..., and, “a
computing module” (claim 20), we detemine that these recitations are
insufficiently generic to invoke 112(f). Greenberg v. Ethicon Endo–
Surgery, Inc., 91 F.3d 1580 (Fed.Cir.1996).
However we find that the recitation of “a module” (claim 19) is
sufficiently generic not to overcome the presumption that the limitation is
not a means-plus-function limitation. Apex Inc. v. Raritan Computer, Inc.,
325 F.3d 1364, 1373 (Fed. Cir. 2003).
Thus, we look to the Specification for an adequate description for a
showing what is meant by that language.

2 All references to the Final Office Action refer to the Final Office Action
mailed on April 27, 2018.
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‘[I]f one employs means-plus-function language in a claim, one
must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim the invention
as required by the second paragraph of section 112.’ In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc).

Appellant states that the functional subject matter of claim 19 is
described in the Specification as follows:
The entire Claim 19 outlines in detail the many steps to be
taken, including matching the applicant reference data to the
team reference data, computing matched answer scores (using
adjusted frequency values of applicant reference data and team
reference data) and generating a matching score (see paragraphs
[00110], [00111] and [00114]).
(Appeal Br. 7).
We agree with Appellant that the Specification ¶¶ [00110], [00111]
and [00114] supports the function of claim 19, almost verbatim, see, e.g., “a
matching module configured to match the applicant reference data to the
team reference data to generate a matching score.” Specification ¶110.
Therefore, we construe the language of claim 19 to be properly
worded under and have the effect of 35 U.S.C. § 112(f).

35 U.S.C. § 112(a) REJECTION
We will not sustain the rejection of claims 7 and 19 under this section.
Appellant states:
The output of any measurement is a value. Hence, it is obvious
that paragraphs [00104], [00105] and [00107] describes
frequency value.
Adjusted frequency value is disclosed in the written description.
Paragraph [00115] describes a mathematical adjustment process
performed on the reference response (containing frequency of
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answer option selection). The frequency value is adjusted.
Thus, a person of the ordinary skill in the art would reasonably
conclude that both "adjusted frequency value" and "frequency
value" are disclosed in the written description.
(Appeal Br. 8).
We agree with Appellant that the frequency measurement is described
in paragraph [00107] as “measure the frequency that the reference provider
responses to a question matches the model answers.” And this description
taken with the description in paragraph [00115] of that, “the applicant
reference data may be generated based on the normalized reference
response/s for the applicant,” constitute “an adjusted frequency value.”
There is no in haec verba requirement, claim limitations can be supported in
the specification through express, implicit, or inherent disclosure. The
fundamental factual inquiry is whether the specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
an applicant was in possession of the invention as now claimed. See, e.g.,
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).

35 U.S.C. § 112(b) REJECTION
Concerning the 112 (b) rejection of claims 7 and 19 under this section,
we will sustain the rejection under this heading because these claims appear
to be using the terms “adjusted frequency values” and “frequency values”
interchangeably which, because different terms cannot be used to define the
same item as it, fails to effect a reasonable degree of precision and
particularity.. Thus, the test for determining the question of indefiniteness
may be formulated as whether the claims “set out and circumscribe a
particular area with a reasonable degree of precision and particularity.” In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971).
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35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–24 under 35 U.S.C. § 101.
The Appellant argues claims as a group. We select claim 1 as the
representative claim for this group (App. Br. 17–19), and so the remaining
claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2015).
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
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monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).3 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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 activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
Guidance, 84 Fed. Reg. at 52–55.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] 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.” Guidance, 84
Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states:
Recruitment of a team member can be resource and time
consuming. During a recruitment process, the recruiter would
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typically conduct rounds of interviews for many candidates.
Despite that, such interviews may not be sufficient to evaluate
the candidate as the recruiter would not have spent enough time
with the candidate to know the candidate well. While the
academic record of the candidate can be known from
documents provided by the candidate, it is not easy for a
recruiter to know the character of the candidate from the
records, much less evaluate how the candidate is suitable for the
organization or team culture.
In the event that a candidate does not fit the team or
organization culture after being hired, a team or organization
would usually hesitate to ask the candidate to leave unless there
is a valid reason to do so. Therefore, the team or organization
would have to work with a team member that is not suitable for
the team or organization. Therefore, it is important to have the
right team from the beginning as this would reduce work
friction within the team or organization.

There are tools that help recruiters seek references from
reference providers about the candidates. However, such tools
do not provide any help for the recruiters to evaluate if a
candidate is suitable for the team or organization.
(Spec. [0001]–[0004]).

The preamble states that claim 1 is for evaluating the suitability of an
applicant for a team having at least one team member. Claim 1.
Claim 1 recites in pertinent part,
retrieving a team member reference response for at least one
team member from a reference response database, each team
member reference response from the at least one team member's
reference provider; wherein the team member reference
response comprises a response to a plurality of questions
relevant to the at least one team member; wherein response to
each question relevant to each team member comprises a
selection of one answer option from amongst two or more
answer options; generating a team reference data of the team
based on the at least one team member reference response;
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wherein team reference data comprise the frequency of
selection for each answer option, or values that are computed
from such frequency; receiving an applicant reference response
from at least one reference provider; wherein the applicant
reference response comprises a response from the at least one
reference provider to the plurality of questions; wherein
response from each reference provider to each question
comprises a selection of one answer option from amongst two
or more answer options; generating an applicant reference data
based on at least one of the applicant reference response;
wherein applicant reference data comprise the frequency of
selection for each answer option, or values that are computed
from such frequency; and generating a suitability score based
on the applicant reference data and the team reference data,
wherein the suitability score indicates the suitability of the
applicant for the team.

The Examiner found claims 1 and 13 recite
evaluating the suitability of an applicant for a team having at
least one team member….As such, the abstract idea is a
recruitment system based on a team member reference response
and an applicant reference response and is specifically defined
by the claimed steps listed above. As such, the claims fall under
at least the category of an idea of itself.”
(Final Act. 7, 9).
Accordingly, we determine that claim 1 recites using responses to
evaluate the suitability of an applicant for a team based on a suitability score
derived from reference data and team reference data, which describes a
mental process. That is, claim 1 recites, for example, “generating a team
reference data of the team based on the at least one team member reference
response,” “generating an applicant reference data based on at least one of
the applicant reference response,” “wherein applicant reference data
comprise the frequency of selection for each answer option, or values that
are computed from such frequency.” Concepts performed in the human mind
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as mental processes because the steps of receiving, transmitting, storing, and
analyzing data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016).
Also, evaluating the suitability of an applicant for a team is a form of
managing personal behavior or relationships or interactions between people,
which is one of certain methods of organizing human activity that are
judicial exceptions. Guidance, 84 Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “at least one processor,” and “at least one data storage.”
These components are described in the specification at a high level of
generality. See Spec. ¶¶ 66,67, Fig. 2b. We fail to see how the generic
recitations of these most basic computer components and/or of a system so
integrates the judicial exception as to “impose[] a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exception of certain
methods of organizing human activity and a mental process that is not
integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to determining members of a team, does not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“And that the claims do not preempt all price optimization
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or may be limited to price optimization in the e-commerce setting do not
make them any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step the Examiner found the following:

Applying the test to the claims in the application, the structural
elements of the claims, which include a generic computer that
performs court recognized routine and conventional computer
functions when taken in combination with the functional
elements of (for claim 1) a processor; (for claim 13) a computer
system comprising a server, together do not offer “significantly
more” than the abstract idea itself because the claims do not
recite an improvement to another technology or technical field,
an improvement to the functioning of any computer itself, or
provide meaningful limitations beyond generally linking an
abstract idea (recruitment system based on a team member
reference response and an applicant reference response) to a
particular technological environment (a general purpose
computer).

Final Act. 10–11.
We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, receive, generate, and apply decision criteria to data
amounts to electronic data query and retrieval—one of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming”). In short, each step does no more than require a generic
computer to perform generic computer functions. The claims do not, for
example, purport to improve the functioning of the computer itself. In
addition, as we stated above, the claims do not affect an improvement in any
other technology or technical field. The Specification spells out different
generic equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of information access under different scenarios (see, e.g., Spec.
¶¶ 66, 67, Fig. 2b). Thus, the claims at issue amount to nothing significantly
more than instructions to apply the abstract idea using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–
226.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
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(retrieving/receiving/generating) and storing is equally generic and
conventional or otherwise held to be abstract. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence
of data retrieval, analysis, modification, generation, display, and
transmission was abstract), Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of
processing, routing, controlling, and monitoring was abstract). The ordering
of the steps is, therefore, ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 11–63). We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to provide reviewable analysis of same.
Appellant argues, “Claim 1 is significantly more than an abstract idea.
Claim 1 contains many unconventional, non-routine elements that are
confined to a particular application.” (Appeal Br. 11).
We disagree with Appellant that claim 1 is directed to “a method for
evaluating the suitability of an applicant for a team having at least one team
member” for the reasons specified above with respect to our “directed to”
findings. As determined supra, claim 1 only includes the following
generically recited device limitations: “at least one processor,” “a reference
response database,” and “at least one data storage.” What remains in the
claim after disregarding these device limitations, are conceptual ideas, i.e.,
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“generating a team reference data of the team based on the at least one team
member reference response,” “generating an applicant reference data based
on at least one of the applicant reference response,” and “generating a
suitability score based on the applicant reference data and the team reference
data, wherein the suitability score indicates the suitability of the applicant
for the team”.
“It is clear from Mayo that the ‘inventive concept’ cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous
cases from this court which have held claims ineligible because the only
alleged ‘inventive concept’ is the abstract idea.” Berkheimer v. HP, Inc.,
890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring); see also BSG
Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It
has been clear since Alice that a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.”).
Appellant next argues, “[y]our Appellant also took the view that every
behavioral characteristics, every attitude may be an advantage when the right
situation arises. Hence, Your Appellant developed the method according to
Claim 1, in order to compute questionnaire inputs without ranking any
characteristics as better than other characteristics.” (Appeal Br. 12).
We disagree with Appellant. Computing questionnaire inputs without
ranking any characteristics as better than other characteristics is itself a
mental process and “[a] claim for a new abstract idea is still an abstract
idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (citing Mayo, 566 U.S. at 90).
Appellant argues:
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Our solution is to introduce questions where every
answer is equally desirable. When every answer is equally
desirable or positive, reference providers will be helping the
candidate whichever answer is chosen. Therefore, reference
provider is more likely to provide a more truthful response.
When every answer is equally positive, it is now possible to
assess subjective topics, such as personality, corporate culture,
et cetera.
(Appeal Br. 13).

Again we are not persuaded by Appellant’s arguments because
providing a more truthful response is an the advance which lies entirely in
the realm of abstract ideas. In other words, the asserted improvement is, at
best, an improvement to the abstract idea. But “[n]o matter how much of an
advance in the . . . field the claims recite, the advance lies entirely in the
realm of abstract ideas, with no plausibly alleged innovation in the non-
abstract application realm.” SAP Am., Inc. v. Investpic, LLC 898 F.3d 1161,
1163 (Fed. Cir. 2018).
Appellant next argues, “Claim 1 provides the ability to create
questions where every answer is equally desirable. This is because of two
distinguishing elements: (1) counting the frequencies; and (2) measuring
answer options. These two features of Claim 1 are described in the following
segments.” (Appeal Br. 15).
We disagree with Appellant because again, counting and measuring
are mental processes. These steps mimic human thought processes of
selecting certain information over others, i.e., evaluation, and creating
perhaps with paper and pencil, graphic data interpretation perceptible only in
the human mind. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 611;
FairWarning IP, LLC, 839 F.3d 1093–94. The Federal Circuit has held
similar concepts to be abstract. Thus, for example, the Federal Circuit has
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held that abstract ideas include the concepts of collecting data, analyzing the
data, and reporting the results of the collection and analysis, including when
limited to particular content. See, e.g., Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340–41 (Fed. Cir. 2017)
(identifying the abstract idea of organizing, displaying, and manipulating
data); Elec. Power Grp., LLC , 830 F.3d 1354 (characterizing collecting
information, analyzing information by steps people go through in their
minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas).
On page 16, Appellant lists practical uses of the method of claim 1.
But, we find no indication in the Specification, nor does Appellant direct us
to any indication, that the operations recited in independent claim 1 invoke
any assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, LLC, 773 F.3d 1256 (“[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”). Claim 1 does not improve another
technology, because neither generating data or a recommendation involves
technology. Guidance, 84 Fed. Reg. at 55; see also MPEP § 2106.05(a).
Because no more than a generic computer is required, the claim also does
not define, or rely on, a “particular machine.” MPEP § 2106.05(b). Further,
the method does not transform matter. MPEP § 2106.05(c). Instead, the
claim merely assimilates, creates, generates, evaluates, replaces, and makes
determinations about data. As such, the method has no other meaningful
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limitations (MPEP § 2106.05(e)), and thus merely recites instructions to
execute the abstract idea on a computer (MPEP § 2106.05(f)).
Appellant argues, “Claim 1 provides the ability to create questions
where every answer is equally desirable. This is because of two
distinguishing elements: (1) counting the frequencies; and (2) measuring
answer options.” (Appeal Br. 15).
We are unpersuaded because again, the alleged improvement lies in
the abstract idea itself, e.g., counting frequencies and measuring answer
options, both of which constitute mental processes, not any technological
improvement. See BSG Tech LLC, 899 F.3d 1287–88. Although the claims
purport to efficiently facilitate evaluating the suitability of an applicant for a
team having at least one team member, our reviewing court has held that
speed and accuracy increases stemming from the ordinary capabilities of a
general purpose computer “do[] not materially alter the patent eligibility of
the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance
Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Even if the
advance over the prior art is to “generat[e] a suitability score based on the
applicant reference data and the team reference data, wherein the suitability
score indicates the suitability of the applicant for the team,” that purported
advance is an abstract idea itself, i.e., evaluating suitability. This process is
similar to hedging against financial risk as found in Bilksi v. Kappos, 561
U.S. 593, 609 (2009), and collecting and analyzing investment data in SAP
America , 898 F.3d at 1167–68, using conventional technology. The alleged
improvement lies in the abstract idea itself, not to any technological
improvement. See BSG Tech LLC, 899 F.3d 1287–88.
Appellant argues
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Citing 35 U.S.C. 101, the Office Action of 27-Apr-2018
presented a prima facie rejection of Claim 1. The Office Action
did not address the two key distinguishing elements of Claim 1:
(a) measuring frequency; and (b) measuring selection of answer
options. Both of these elements were specifically designed to
solve a special problem. Both of these elements are
unconventional procedures and were not found in prior art.
They limit the way the method operates in the process of
computing the suitability score.
(Appeal Br. 17).
We disagree with Appellant. The Federal Circuit has repeatedly
observed that “the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for the rejection, “together with such information and references
as may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alteration in original). Thus, all that is required of the Office is that it sets
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132. Id.; see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section 132 is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.”). Here,
the Examiner has made the requisite findings for the Alice steps I and II
requirements as set forth on pages 6–11 of the Final Action.
Also, although the Examiner’s directed to findings do not mention (a)
measuring frequency; and (b) measuring selection, this does not constitute
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error because “[a]n abstract idea can generally be described at different
levels of abstraction.” See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1240 (Fed. Cir. 2016).
Appellant next argues, “Without these two critical elements, the
analysis process of the abstract idea would be similar to LaPasta and
Mondal. Then the analysis process would be performing computations to
numerical scores for each question.” (Appeal Br. 18, see also 23).
However, although the second step in the Mayo/Alice framework is
termed a search for an “inventive concept,” the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for “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 217–218.
Appellant argues,
Firstly, the computer ha[s] to track the multitude of answer
options and associated frequency values. Secondly, the
computer ha[s] to perform complicated computational steps on
the multitude of answer options. A human with pen and paper
is unable to track these answer option frequencies and perform
the computational steps on them.
(Appeal Br. 21).
We disagree with Appellant because “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.”
FairWarning IP, LLC, 839 F.3d 1098 (citing Bancorp Servs. L.L.C., 687
F.3d 1278.
Concerning dependent claims 2, 5, 6, and 7, Appellant argues
generally the importance of adjusted frequency values and/or normalizing
scores as claimed. However, again, these items are directed to a mental
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process and/or mathematical calculations which are excluded as judicial
exceptions. Guidance, 84 Fed Reg. 52.
Concerning dependent claims 3, 4, 9, 10, 11, 12, 13, and 14,
Appellant’s arguments merely repeat claim limitations without substantive
argument. A statement which merely points out what a claim recites will not
be considered an argument for separate patentability of the claim. See
37 C.F.R. § 41.37 (c)(1)(iv) (2017).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s prima facie case of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection
of claims 1–24.
35 U.S.C. § 103(a) REJECTION
Each of independent claims 1 and 13 recites in pertinent part,
“wherein team reference data comprise the frequency of selection for each
answer option, or values that are computed from such frequency,” and
“wherein applicant reference data comprise the frequency of selection for
each answer option, or values that are computed from such frequency.”
Appellant argues the following: “Neither LaPasta nor Mondal
disclosed these distinguishing elements of Claim 1. LaPasta does not
disclose the elements of measuring frequency or measuring selection of
answer options. Neither does Mondal disclose these elements. The additional
elements are not obvious to a person of ordinary skill in the art.” (Appeal
Br. 34–38).
The Examiner found,
LaPasta, para 0027, discloses a competency based Survey
database that allows the comparative review of reference
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information against one or more candidates, the company's own
employees, the industry or other normalized database by job
type, organization or company competency. LaPasta, Figure
8A, discloses a response from a selection of one answer option
from amongst two or more answer options, where each answer
option has values ranging from 1 – 7 (measuring selection of
answer options). LaPasta, para 0060, discloses an overall score
on a weighted Scale in which the weight (frequency) used for
each question or competency is based on the correlation to the
performance data with higher weight being used for higher
correlation.
(Answer 8–9).
Our review of LaPasta fails to reveal any disclosure of team reference
data comprising the frequency of selection for each answer option, or values
that are computed from such frequency, or applicant reference data
comprising the frequency of selection for each answer option, or values that
are computed from such frequency. It is not apparent, and the Examiner
does not explain how normalizing the raw scores from each database
disclosed by La Pasta equates to the two types of frequency data which is
required by the claims. Accordingly, we will not sustain the rejection of
independent claims 1 and 13.
Because claims 2–12, and 14–24 depend from claims 1 and 13, and
because we cannot sustain the rejection of claims 1 and 13, the rejection of
claims 2–12, and 14–24 likewise cannot be sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–24 under
35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 1–24 under 35
U.S.C. § 103.
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We conclude the Examiner erred in rejecting claims 7 and 19 under 35
U.S.C. § 112(a).
We conclude the Examiner did not err in rejecting claims 7 and 19
under 35 U.S.C. § 112(b).
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–24 101 Eligibility 1–24
7, 19 112(a) Written
Description
7, 19
7, 19 112(b) Indefiniteness 7, 19 .
1–9, 11, 13–
21, 23
103 LaPasta,
Mondal
1–9, 11, 13–
21, 23
10, 22 103 LaPasta,
Mondal,
Kleeman
10, 22
12, 24 103 LaPasta,
Mondal,
Busboom
12, 24
Overall
Outcome
1–24

DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
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)(1)(iv).
AFFIRMED