Vishal Kapoor et al.

Patent Trials and Appeals Board

Aug 21, 2019

14788228 - (D) (P.T.A.B. Aug. 21, 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.
14/788,228 06/30/2015 Vishal Kapoor 0356.01.0.US (159311) 1055
138317 7590 08/21/2019
Quarles & Brady LLP (Pearson Edu)
Attn: IP Docket
411 E. Wisconsin Ave.
Suite 2350
Milwaukee, WI 53202
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VISHAL KAPOOR,
COLE JOSEPH CECIL,
and DAVID EARL RODGERS
____________

Appeal 2017-0106331
Application 14/788,2282
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
MATTHEW S. MEYERS Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4–12, 14–20, and 22 which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
April 20, 2017) and Reply Brief (“Reply Br.,” filed August 4, 2017), and the
Examiner’s Answer (“Ans.,” mailed June 16, 2017) and Final Office Action
(“Final Act.,” mailed November 23, 2016).
2 Appellants identify “Pearson Education, Inc.” as the real party in interest.
Appeal Br. 3.
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We AFFIRM.
CLAIMED INVENTION
Appellants’ claims relate to “a content distribution network for
accessing deidentified content” (Spec. ¶ 26).
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. An evaluation system that comprises a network interface
controller (NIC), a data store, a processor, and a memory
comprising computer executable instructions which when
executed by the processor cause the processor to perform the
method of:
[a] transmitting, by the evaluation system using the
network interface controller (NIC) of the evaluation system to a
user device, a first test strand and a second test strand, wherein
the first test strand and the second test strand are portions of a
test, and wherein the evaluation system and the user device
communicate within a content distribution network;
[b] receiving, by the network interface controller (NIC)
from the user device, one or more responses to the first test strand
and the second test strand;
[c] comparing a key with the one or more responses to the
first test strand and the second test strand;
[d] determining a first outcome for the first test strand,
based in part on the comparison of the key with the one or more
responses;
[e] determining a second outcome for the second test
strand, based in part on the comparison of the key with the one
or more responses;
[f] accessing the data store of identifier portions and score
identifier portions;
[g] determining a first identifier portion that is stored in
the data store, wherein the first identifier portion identifies the
first test strand;
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[h] determining a first score identifier portion that is stored
in the data store, wherein the first score identifier portion
identifies the first outcome;
[i] determining a second identifier portion that is stored in
the data store, wherein the second identifier portion identifies the
second test strand;
[j] determining a second score identifier portion that is
stored in the data store, wherein the second score identifier
portion identifies the second outcome;
[k] generating an identifier by concatenating:
the first identifier portion that identifies the first test
strand with the first score identifier portion that identifies
the first outcome with the second identifier portion that
identifies the second test strand with the second score
identifier portion that identifies the second outcome,
wherein the identifier:
uniquely indicates the first outcome and the second
outcome,
coding of the identifier obscures unaided human
interpretation of the first outcome and the second outcome,
and
identifies data for remediating performance on the
first test strand or the second test strand; and
[l] transmitting, by the network interface controller (NIC),
the identifier to the user device to display the identifier at the user
device, wherein the user device is enabled to display the
identifier.

REJECTION3
Claims 1, 2, 4–12, 14–20, and 22 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.

3 A rejection of claims 11, 12, and 14–20 under 35 U.S.C. § 112(b) was
withdrawn by the Examiner (see Ans. 2).
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ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue claims 1, 2, 4–12, 14–20, and 22 as a group (see
Appeal Br. 12–28; see also Reply Br. 2–5). We select independent claim 1
as representative. Claims 2, 4–12, 14–20, and 22 stand or fall with
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, 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. 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. Id. 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
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(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 (1853))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Mayo/Alice 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 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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). Under that guidance, 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); and
(2) additional elements that integrate the judicial exception into a
practical application, i.e., that “apply, rely on, or use the judicial exception
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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.” See 2019 Revised Guidance, 84 Fed. Reg. at 53; see
also MPEP § 2106.05(a)–(c), (e)–(h).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look 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.
See 2019 Revised Guidance.
Appellants argue that the Examiner’s rejection is in error because the
Examiner fails to establish a prima facie case of subject matter ineligibility
(see Appeal Br. 13–27; see also Reply Br. 3–5). Appellants’ arguments are
not persuasive.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
analyzes the claims using the Mayo/Alice two-step framework (see Final
Act. 6–14; see also Ans. 2–12). The Examiner states that independent 1
recites the operations of transmitting of two test strands to a user
device, receiving responses to the test strands, determining
outcomes for the strands based on comparison to a key, accessing
a data store of identifier portions and score identifier portions
corresponding to the outcomes, generating an identifier by
concatenating the identifier portions and score identifier portions
and transmitting the identifier to the user device.
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(Final Act. 8). The Examiner considers this to be an abstract idea, inasmuch
as it may be characterized as being at least related to “the organization of
human activity” (Ans. 3). The Examiner further states that independent
claim 1 does not include additional elements or a combination of elements
sufficient to transform the claim into a patent-eligible application of the
abstract idea (see Final Act. 12–14; see also Ans. 9–11). The Examiner,
thus, has followed the two-part framework specified by the Supreme Court
in Mayo/Alice consistent with Office guidelines.
In this regard, the Examiner has articulated the reasons for the
rejection and has notified Appellants 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.”
35 U.S.C. § 132. And we find that, in doing so, the Examiner sets forth a
prima facie case of subject matter ineligibility. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011); 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.”). And, when viewed through the lens of the 2019
Revised Guidance, the Examiner’s analysis depicts the claimed subject
matter as one of the ineligible “methods of organizing human activity” or
“[m]ental processes” under Prong One of Revised Step 2A. See 2019
Revised Guidance, 84 Fed. Reg. at 51–52.
In response to the Examiner’s determination, Appellants argue that the
Examiner “provides an unclear abstract idea,” “improperly oversimplifies
the claims,” and thus, erred in determining that the present claims are
directed to an abstract idea (see Appeal Br. 13–22). We cannot agree.
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Under the first prong of step 2A of the 2019 Revised Guidance, we
first determine if the claims recite an abstract idea. In this regard, we note
that the Specification is titled “DEIDENTIFIED ACCESS OF CONTENT,”
and states that when the source or content of data are sensitive “[i]t may be
beneficial to secure or encode the data to hide the source or content” (Spec.
¶ 1). The Specification identifies, for example, that “when [a] student is
placed in a class (e.g., physical or online), the level of the class is identified
for others, so that others may deduce how well the student performed on an
entrance exam for the class” (id. ¶ 24). According to the Specification,
“[f]or some students, it may be embarrassing to advertise the results of these
tests” (id.).
Consistent with this description, independent claim 1 recites broadly
“[a]n evaluation system” including a processor having instructions for
performing the steps of “transmitting … a first test strand and a second test
strand,” “receiving … one or more responses to the first test strand and the
second test strand,” “comparing a key … ” “determining a first outcome for
the first test strand … ” “determining a second outcome for the second test
strand … ” “accessing [a] data store of identifier portions and score
identifier portions,” “determining a first identifier portion … a first score
identifier portion … a second identifier portion … [and] a second score
identifier portion … ” “generating an identifier … ” and “transmitting … the
identifier to [a] user device to display the identifier.”
Upon reviewing the Specification and the claim as whole, as
summarized above, we determine that independent claim 1 is directed
broadly to “assessing test performance and generating an identifier to access
data for remediation.” Here, independent claim 1 transmits information (i.e.,
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first and second test strands defined by portions of a test (limitation [a])),
receives information (i.e., responses to the first and second test strands
(limitation [b])), analyzes information (i.e., compares a key with the
responses (limitation [c]) to determine outcomes for the test strands
(limitations [d–e]) and accesses a data store (limitation [f]) to determine
identifier portions (limitations [g–j])), processes information (i.e., generating
an identifier by concatenating the identifier portions (limitation [k])), and
transmits information (i.e., the generated identifier (limitation [l])). Thus,
we find independent claim 1 reads on performance of the steps in the mind,
but for the recitation of generic computer components (cf. Spec. ¶¶ 27–29
and 92) that, under the 2019 Revised Guidance, fall under the category of
“mental processes.”
Accordingly, independent claim 1 recites an abstract idea. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper”); Mortg. Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for “anonymous loan
shopping” was an abstract idea because it could be “performed by humans
without a computer”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use
of a computer and still found that the underlying patent-eligible invention
could be performed via pen and paper or in a person’s mind”).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we turn to the second prong of step 2A of the 2019 Revised
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Guidance and determine whether the claims recite a practical application of
the recited judicial exception. Here we look to see if, for example, (i) any
additional elements of the claims reflects an improvement in the functioning
of a computer or to another technological field, (ii) an application of the
judicial exception with, or by use of, a particular machine, (iii) a
transformation or reduction of a particular article to a different state or thing
(iv) or a use of the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55;
See also MPEP § 2106.05(a)–(c), (e)–(h).
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the steps 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 effects a transformation or reduction of a particular article to a different
state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention “appl[ies], rel[ies] on, or us[es] 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.” See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Appellants argue that like the claims in McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), independent claim 1 is
patent-eligible because it “recite[s] an improvement to a technical field”
(Appeal Br. 23–24). More particularly, Appellants argue independent
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claim 1 “improves the technical field in the educational arts by providing
access to remediation data with an identifier, where coding of the identifier
obscures unaided human interpretation of the outcome of the test” and
“improves a distribution of data for remediating performance that previously
did not exist (e.g., where coding of the identifier obscures unaided human
interpretation of the outcome of the test)” (id.). However, we agree with the
Examiner that the additional limitations of “an ‘evaluation system … a
network interface controller, a user device and a content distribution
network” (Final Act. 10) simply allow a generic computer to perform the
claimed operations using generic computer functions (cf. Spec. ¶¶ 27–29).
In the present invention, available data from a key and data store is simply
analyzed/compared in order to determine test performance and display
results.
We find no parallel between independent claim 1 and the claims at
issue in McRO. The Federal Circuit premised its determination that the
claims in McRO were patent-eligible, not merely on the specificity of the
claimed animation scheme, but rather on the fact that the claims, when
considered as a whole, were directed to a technological improvement over
the existing, manual 3-D animation techniques and used limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice. We are not persuaded that a comparable
situation is presented here.
Instead, we agree with the Examiner that the claims can be viewed as
“the use of an answer key to score a test and subsequently obfuscating those
answers through a second identifier key” (Ans. 8) which does not purport to
improve the functioning of the computer itself and merely uses the computer
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as a tool. As our reviewing court has made clear, “relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015).
Furthermore, we note that the Specification identifies that “a computer
can calculate a complex mathematics problem, whereas the human
interpretation of the same mathematics problem would take more time or be
unsolvable for the human” and that “a computer can easily see a pattern in a
coded identifier … whereas the human interpretation of [a] pattern may take
more time or be unsolvable” (Spec. ¶ 92). However, the Specification also
identifies that “[i]n some embodiments, unaided human interpretation will
not include these computers, servers, or user devices” (id.). Thus, we find
the alleged advantages that Appellants identify do not concern an
improvement to computer capabilities or provide details on the technological
manner in which the steps are performed; but instead, simply relabel a test
result to one that is less commonly recognized by humans as being
correlated to a specific performance on the test through a process in which a
computer is used as a tool in its ordinary capacity (cf. Spec. ¶¶ 24, 27–29).
Turning to Step 2B of the of the 2019 Revised Guidance, we
determine whether the additional elements (1) add a specific limitation or
combination of limitations that is not well-understood, routine, and
conventional activity in the field, which is indicative that an inventive
concept may be present or (2) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative that an
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inventive concept may not be present. See 2019 Revised Guidance, 84 Fed.
Reg. at 56.
Appellants argue that “the claims provide significantly more than an
abstract idea” (Appeal Br. 27; Reply Br. 3–5). However, other than merely
reproducing portions of independent claim 1 (see Appeal Br. 27), Appellants
provide no further argument, such as how the elements are arranged in a
non-generic or unconventional manner such that it is a technical
improvement over prior art ways of “assessing test performance and
generating an identifier to access data for remediation.” See BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351
(Fed. Cir. 2016).
Finally, to the extent Appellants maintain that the claimed invention is
patent-eligible, i.e., that claim 1 amounts to “significantly more” than an
abstract idea, because “the claims have been determined to be non-obvious
over the prior art” (Appeal Br. 21), Appellants misapprehend the controlling
precedent.
Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. 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 217–18 (citation omitted).
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology, 569 U.S. at 591.
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A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond,
450 U.S. at 188–89 (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and claims 2, 4–12,
14–20, and 22 which fall with independent claim 1.

DECISION
The Examiner’s rejection of claims 1, 2, 4–12, 14–20, and 22 under
35 U.S.C. § 101 is affirmed.
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