Taylor, Benjamin et al.

Patent Trials and Appeals Board

Dec 6, 2019

15477844 - (D) (P.T.A.B. Dec. 6, 2019)

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.
15/477,844 04/03/2017 Benjamin Taylor 28969.43 (L0010C) 8302
28221 7590 12/06/2019
PATENT DOCKET ADMINISTRATOR
LOWENSTEIN SANDLER LLP
ONE LOWENSTEIN DRIVE
ROSELAND, NJ 07068
EXAMINER
LINDSEY III, JOHNATHAN J
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/06/2019 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):
patents@lowenstein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN TAYLOR and LOREN LARSEN
____________

Appeal 2019-002052
Application 15/477,844
Technology Center 3600
____________

Before JOHN E. SCHNEIDER, RYAN H. FLAX, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to a method, instructions, and digital evaluation platform involving a
human bias detection tool, which have been rejected as directed to patent-
ineligible subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies HireVue as the real party in
interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The background section of the Specification explains that
[T]here have been numerous documented instances in which
[job] candidates have been selected based on qualities or
characteristics other than the skills and qualifications required
for a particular job . . . . [W]hen candidates are chosen on the
basis of gender, race, religion, ethnicity, sexual orientation,
disability, or other categories that are protected to some degree
by law, penalties may imposed on entities for such practices. . .
Additionally, when candidates are selected based on non-work
related characteristics, the best candidates for the position may
be overlooked.
Spec. ¶ 4. To address these problems, the Specification describes
“[m]ethods and systems for bias detection to improve the reviewing and
assessment of digital interviews.” Id. ¶ 17. According to the Specification,
“[t]he bias detection tool extracts characteristics of the evaluation candidates
based on the characteristics of the candidate extracted from the digital
interview data, and determines whether the evaluation data indicates a bias
of one or more evaluators.” Id. “This determination may be made before
the results of the bias rise to the level of justifying legal action, allowing
companies and other organizations to take action against conscious or
unconscious bias at an earlier stage.” Id.
Claims 1–21 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claim 1 is representative and reads as follows:
1. A method comprising:
retrieving, by a human bias detection tool executed by a
computing device of a digital interviewing platform, evaluation
data from a data storage device, the evaluation data generated
with respect to a set of evaluators who evaluated recorded video
responses of first candidates to questions asked during a hiring
process;
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performing, by the human bias detection tool, video
analysis on video frames of the video responses to identify
visual indicators of faces of the first candidates, wherein the
visual indicators comprise one or more facial features;
generating a combined vector representation of the first
candidates by combining, by the human bias detection too, the
visual indicators with an audio indicator that further
characterizes respective first candidates;
performing, by the human bias detection tool, supervised
learning of the combined vector representation of the first
candidates with respect to one or more classifications of the
first candidates, to train a classification model;
classifying second candidates according to a protected
class by applying, by the human bias detection tool, the
classification model to second indicators captured by the
second candidates, wherein the second indicators comprise one
or more of a second visual indicator or a second audio indicator
of respective second candidates;
determining, by the human bias detection tool, that
evaluation data for the second candidates indicates a disparate
impact of one or more evaluators of the set of evaluators with
respect to classifications of the second candidates according to
the protected class;
generating, by the human bias detection tool, first data
including a notification of determination of the disparate impact
of the one or more evaluators; and
transmitting the first data to a second computing device
of a supervisor, the first data to cause a user interface of the
second computing device to display a first graphical user
interface (GUI) element containing the notification.

Appeal Br. 29–30.
Appellant seeks review of Examiner’s rejection of claims 1–21 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter.
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ANALYSIS
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 judicial exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. 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 Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In Alice step one,2 we ask whether the claims
are directed to an exception to patent eligibility, such as an abstract idea or
law of nature. Alice, 573 U.S. at 218. In Alice step two,3 we examine the
elements of the claims to determine whether they contain an inventive
concept sufficient to transform the claimed judicial exception into a patent-
eligible application. Mayo, 566 U.S. at 71–72 (quoting Alice, 134 S. Ct. at
2355).
The Office published revised guidance on the application of the
Supreme Court’s Alice analysis in January 2019. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50–57 (“Guidance”). According to the Guidance, we look to
whether the claim recites: (1) a judicial exception, including certain
groupings of abstract ideas such as mathematical concepts and mental

2 The USPTO Guidance, discussed infra, calls this “Step 2A,” having
subparts called “prong 1” and “prong 2.”
3 The USPTO Guidance calls this “Step 2B.”
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processes (Guidance Step 2A, prong 1); and (2) additional elements that
integrate the judicial exception into a practical application (Guidance Step
2A, prong 2). Only if the claim recites a judicial exemption and does not
integrate that exception into a practical application, do we then examine
whether the claim adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field (Guidance
Step 2B). See Guidance at 54–56. An update to the Guidance was recently
published, further elaborating on this analysis. USPTO’s October 17, 2019
Memorandum, October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (“Guidance Update”).
Examiner’s Findings and Conclusions
Regarding Alice step one (Guidance Step 2A), Examiner determines
that “[m]any of the operative steps recited in the claims describe a method
for selecting certain information, analyzing it using mathematical
techniques, and reporting or displaying the results of the analysis,” which
“fall squarely within the abstract idea category.” Ans. 4; see also Final Act.
2–3. Under Alice step two (Guidance Step 2B), Examiner finds that the
“additional embodiment limitations” such as a “human bias detection tool”
and a “graphical user interface (GUI) element . . . fail to qualify as
significantly more” than the abstract idea itself. Ans. 6–7; see also Final
Act. 5–6.
Appellant’s Contentions
Appellant disputes Examiner’s rejection at both Alice steps. See
Appeal Br. 9–27. In particular at step one, Appellant
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contends that while claim 1, when considered as a whole, may
involve mathematical algorithms, data retrieval and analysis,
and display of a result of that analysis, claim 1 is instead
“directed to” a process by which computer technology can
detect human bias by discovering a disparate impact of an
evaluator with respect to classifications, according to a
protected class, of a candidate being reviewed.

Id. at 10. Thus, urges Appellant, its claims may involve an abstract concept,
but they do not recite and are not directed to the judicial exception itself.
See id. at 11.
Our Review
Applying the Supreme Court’s Alice framework, as further instructed
by the Office’s Guidance, we are persuaded that Appellant’s claims do not,
in fact, recite an abstract idea such as a mathematical concept or any other
judicial exception (Guidance Step 2A, Prong 1). 4 Therefore, Appellant’s
claims are patent-eligible.
Guidance Step 2A, Prong 1
According to Examiner, the claimed steps recite a mathematical
algorithm or concept. See Ans. 5; Final 2. We disagree. “A claim does not
recite a mathematical concept (i.e., the claim limitations do not fall within
the mathematical concept grouping), if it is only based on or involves a
mathematical concept.” Guidance Update 3. Here, claim 1 recites a process
that uses algorithms to analysis video and audio data to train a classification
model that is then used to analyze additional data to detect potential bias by
human evaluators. While this process involves the use of mathematical

4 It is undisputed that Appellant’s claims are directed to one of the statutory
classes of patentable subject matter recited in 35 U.S.C. § 101. Thus, we
begin our analysis at Step 2A, prong 1 of the Guidance.
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concepts (e.g., to extract video and audio indicators, generate combined
vector representations, and train the classification model), claim 1 does not
itself recite any mathematical relationship, formula or calculation such that it
could be deemed to recite a judicial exception. Id.
In this regard, Appellant’s claim 1 is similar to the hypothetical claim
in Example 39 (Method for Training a Neural Network for Facial Detection)
of the Office’s Guidance. Subject Matter Eligibility Examples: Abstract
Ideas, 8–9, available at https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf. The claim in Example 39 recites the
collection and transformation of “digital facial images” to create a “training
set” that is then used to train a “neural network” for facial detection. The
creation of a training set in the claim of Example 39 is analogous to the
generation of the “combined vector representation” in Appellant’s claim 1,
whereas the neural network in Example 39 is akin Appellant’s claimed
“classification model.” In both instances, “[w]hile some of the limitations
may be based on mathematical concepts, the mathematical concepts are not
recited in the claims.” Id. at 9. Moreover, “the claim does not recite a
mental process because the steps are not practically performed in the human
mind,” nor does it recite “any method of organizing human activity such as a
fundamental economic concept or managing interactions between people.”
Id. Accordingly, like the claim in Example 39, Appellant’s claim 1 does not
recite any of the groups of abstract ideas identified in the Guidance.
Having concluded that claim 1 does not recite an abstract idea, we
reverse Examiner’s rejection without proceeding to USPTO Guidance Step
2A, prong 2 or to Alice step 2 to determine whether the claims integrate an
abstract idea into a practical implementation or also provide an inventive
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concept. See Guidance at 56. We also reverse Examiner’s rejection of
claims 2–21, which is premised on the same rationale as the rejection of
claim 1. See Final Act. 2–7.

SUMMARY
We reverse the rejection of claims 1–21 under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter.
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21

REVERSED