Catherine McClellanDownload PDFPatent Trials and Appeals BoardMay 26, 20212020005419 (P.T.A.B. May. 26, 2021) Copy Citation 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. 13/099,689 05/03/2011 Catherine McClellan 011948-0164-999 1381 20583 7590 05/26/2021 Jones Day 250 Vesey Street New York, NY 10281-1047 EXAMINER HULL, JAMES B ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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): japarker@jonesday.com ncgeorge@jonesday.com wtokmakidis@jonesday.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CATHERINE MCCLELLAN Appeal 2020-005419 Application 13/099,689 Technology Center 3700 Before CHARLES N. GREENHUT, LISA M. GUIJT, and PAUL J. KORNICZKY, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-005419 Application 13/099,689 2 STATEMENT OF THE CASE1, 2 Pursuant to 35 U.S.C. § 134(a), Appellant3 appeals from the Examiner’s decision to reject claims 1–4, 9–15, and 20–22. See April 5, 2019 Final Act. (“Final Act.”) 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a computer-implemented systems and methods for distributing constructed responses to scorers. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method of distributing constructed responses to scorers, comprising: generating a constructed response scoring plan, wherein the scoring plan includes distributing a plurality of constructed responses to scorers positioned at disparate locations from a central server to which the scorers are connected via a network for scoring, wherein a scoring effectiveness metric is calculated for the scoring plan; identifying one or more undesirable statistical aspects that have a negative effect on the scoring effectiveness metric; receiving a plurality of distribution rules for reducing the effect of the one or more undesirable statistical aspects on the 1 In a prior appeal in this application (Appeal Number 2017-008058, decided August 22, 2018), the Board affirmed the Examiner’s rejection of the claims under 35 U.S.C. § 101. 2 The Appeal Brief filed September 3, 2019 (“Sept. 3, 2019 Appeal Br.”) was held non-compliant on March 10, 2020. A Supplemental Appeal Brief including, inter alia, a replacement Claims Appendix and Arguments section was filed April 7, 2020. References herein made to “Appeal Br.” refer to the Supplemental Appeal Brief filed April 7, 2020. 3 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Educational Testing Service. Sept. 3, 2019 Appeal Br. 1. Appeal 2020-005419 Application 13/099,689 3 scoring effectiveness metric with a computer processing system, wherein the rules include a queue population rule, a response distribution rule and an undue influence rule, and wherein the distribution rules are associated with corresponding priority levels, the priority levels including a level that permits an associated distribution rule to be temporarily relaxed; populating a constructed response queue for a particular scorer and additional constructed response queues for other scorers with the computer processing system based on the queue population rule, wherein a constructed response in a response pool is not added to the constructed response queue if having the particular scorer score said constructed response in the pool would violate the queue population rule; evaluating a constructed response that has already been assigned to the response queue for the particular scorer from the front of the constructed response queue for the particular scorer with the computer processing system based on the response distribution rule and based on the undue influence rule, wherein the undue influence rule determines whether the particular scorer is permitted to score a constructed response in the constructed response queue based on an identity of a second particular scorer to whom said constructed response in the constructed response queue has already been allocated and a comparison of a non- scoring-based demographic metric of the particular scorer and the second particular scorer, wherein said constructed response from the constructed response queue for the particular scorer is not provided to the particular scorer if having the particular scorer score said constructed response in the constructed response queue for the particular scorer would violate the response distribution rule and the undue influence rule, wherein the particular scorer is provided a different constructed response from the constructed response queue for scoring if having the particular scorer score said constructed response would violate the response distribution rule and the undue influence rule; determining whether a constructed response in the constructed response queue is unallocated, once allocated, or twice allocated; and providing said constructed response from the constructed response queue to a remote graphical user interface of the particular scorer for scoring if having the particular scorer score Appeal 2020-005419 Application 13/099,689 4 said constructed response in the constructed response queue for the particular scorer would not violate the response distribution rule and the undue influence rule and the constructed response is unallocated or once allocated; wherein the undue influence rule comprises a ratio between (i) a product of a number of times amount of influence on a pool of scores that a pair of raters is permitted to have given a time period and a total number of responses and (ii) a maximum threshold the pair of raters are assumed to be in error in scoring, the undue influence rule prevents providing the constructed response to the particular scorer in response to a number of times, that the particular scorer and the second particular scorer have scored constructed responses as a scorer pair, exceeding a threshold; and wherein the queue population rule prevents the particular scorer from being assigned a constructive response from a respondent if both the particular scorer and the respondent have a college education or both the particular scorer and the respondent lack a college education. REJECTION Claim 1–4, 9–15, and 20–22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception without significantly more. Final Act. 2. OPINION Initially, we note that Appellant does not identify related appeals in this application. Sept. 3rd, 2019 Appeal Br. 1, 36. However, in Appeal Number 2017-008058 (“Prior Appeal”) of the present application, which identified the same real party in interest and was signed by the same legal representative as the present appeal, we affirmed the Examiner’s rejection of the claims (“June 2, 2016 Non-Final Act.”) under 35 U.S.C. § 101. The rejection presently before us is also based on eligibility under 35 U.S.C. § 101. There have been only relatively minor amendments to the Appeal 2020-005419 Application 13/099,689 5 representative claim, claim 1,4 since our prior decision (“Prior Decision”), and none of the amended language appears to be the subject of argument in the present appeal. Thus, we see no reason why Appeal Number 2017- 008058 was not identified by Appellant pursuant to 37 C.F.R. § 41.37(c)(1)(ii), which provides: (ii) Related appeals, interferences, and trials. A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences, trials before the Board, or judicial proceedings (collectively, "related cases") which satisfy all of the following conditions: involve an application or patent owned by the appellant or assignee, are known to appellant, the appellant’s legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal, except that such statement is not required if there are no such related cases. If an appeal brief does not contain a statement of related cases, the Office may assume that there are no such related cases. The only difference in the subject matter defined by the present version of claim 1 as compared to the version before us in the Prior Appeal relates to computational details associated with the recited “undue influence rule.” See Amendment to the Claims dated Oct. 19, 2018. Appellant makes no argument in the present appeal that this modification to the claim, itself, or as part of the ordered combination, should alter our Prior Decision with regard to patent eligibility. In our Prior Decision, we rejected Appellant’s argument that the Examiner improperly characterized the claimed subject matter as being directed to a set of rules or a method for organizing human activity. Prior Decision 4–6. We also rejected the argument that merely showing certain 4 See 37 C.F.R. § 41.37(c)(1)(iv) (2020). Appeal 2020-005419 Application 13/099,689 6 subject matter is not preempted is not necessarily demonstrative of patent eligibility. Prior Decision 7–10. Here, Appellant advances essentially the same two arguments with only minor differences, and a change in the order they are presented. The Examiner maintains the position taken in the Prior Appeal, that claims 1 is directed to a set of rules or a method for organizing human activity. Final Act. 3–6. We agree with the Examiner’s reasoning and conclusion for the reasons discussed in the Prior Appeal. Games may be eligible for patenting just like test scoring methods. However, if, as our reviewing court has held, claims that amount to an effort to cover rules of a game themselves are not eligible (In re Smith, 815 F.3d 816, 818 (Fed. Circ. 2016)), we see no reason why claims that amount to an effort to cover rules for test scoring should be eligible. The difference in this appeal is that, in addition to being directed to rules or a method for organizing human activity, the Examiner has now additionally stated that the claim could also be regarded as being directed to a mathematical concept under the PTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “2019 Guidance” or “2019 PEG”). Appellant’s response to the Examiner’s position in this regard is: “[w]hile the independent claims may be based upon mathematical relationships, formulas, or calculations (e.g., ratios and threshold comparisons) . . . those calculations are not explicitly recited.” Appeal Br. 21. Appellant’s argument misses the point of the case law cited in the 2019 Guidance and the examples (i.e., cited Example 38) associated therewith. It is not the particular format of the mathematical formula that is controlling. A recitation of Ohm’s Law, V=IR, most certainly does not Appeal 2020-005419 Application 13/099,689 7 become less abstract by instead reciting that “the voltage is determined based on the current and resistance.” The relevant issue, as discussed in the 2019 Guidance (p. 52, n. 12; p 53, n. 16) is not whether a specific equation is recited but whether there is some meaningful application of the mathematical formula that serves to make the claimed subject matter as a whole patent eligible. Appellant’s argument and analogy to Example 38 pointing to the mere absence of specific “calculations” does not rebut the Examiner’s determination that claim 1, in addition to being characterized as being directed to a set of rules and method for organizing human activity, can also accurately be characterized as being directed to a mathematical concept for preventing test scoring bias. Next, without any substantive changes, Appellant recasts the preemption argument we rejected in the prior appeal as an argument that the same alleged lack of preemption demonstrates the presence of a “practical application” under the 2019 guidance. Cf. Appeal Br. 17–8 with Nov. 1, 2016 Appeal Br. 18. We disagree with Appellant’s preemption argument for the reasons set forth in our Prior Decision. Prior Decision 7–10. Much of this appeal appears to be an attempt to reargue eligibility under the PTO’s 2019 Guidance for subject matter previously deemed ineligible prior to the issuance of that guidance. The Examiner agreed to reframe the Examiner’s analysis in accordance with the 2019 Guidance: Examiner agrees that the previous rejection mailed on 12/27/18 did not take into account the criteria specified by the 2019 PEG, because the 2019 PEG was not issued at the time of the previous Office Action. The rejection under 35 USC 101 has been revised above in response to the 2019 PEG. Therefore, Applicant's argument is not persuasive and the rejection is maintained. Appeal 2020-005419 Application 13/099,689 8 Final Act. 7. That decision to do so would certainly seem to be within the Examiner’s discretion. However, with the possible exception of some of the issues discussed above, we do not discern any substantive changes to the Examiner’s analysis and conclusions. The 2019 Guidance expressly provides: This guidance does not constitute substantive rulemaking and does not have the force and effect of law. The guidance sets out agency policy with respect to the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. 101 in view of decisions by the Supreme Court and the Federal Circuit. The guidance was developed as a tool for internal USPTO management and does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO. Rejections will continue to be based upon the substantive law, and it is those rejections that are appealable to the Patent Trial and Appeal Board (PTAB) and the courts. All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance. Failure of USPTO personnel to follow the guidance, however, is not, in itself, a proper basis for either an appeal or a petition. 2019 Guidance at 51. Thus, we see no need to revisit issues previously addressed. CONCLUSION The Examiner’s rejection is AFFIRMED. Appeal 2020-005419 Application 13/099,689 9 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 9–15, 20–22 101 Eligibility 1–4, 9–15, 20–22 RESPONSE 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 Copy with citationCopy as parenthetical citation