Ex Parte Ajmera et al

Patent Trial and Appeal Board

Dec 29, 2017

13408547 (P.T.A.B. Dec. 29, 2017)

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.
13/408,547 02/29/2012 Jitendra Ajmera IN920110235US1
(790.147)
4590
89885 7590 12/29/2017
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
HILLERY, NATHAN
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
12/29/2017 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 JITENDRA AJMERA, SHANTANU RAVINDRA GODBOLE,
HIMABINDU LAKKARAJU, BERNARD ANDREW RODEN, and
ASHISH VERMA1
Appeal 2017-005334
Application 13/408,5472
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jitendra Ajmera et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision, set forth in the Final Action (Dec. 16, 2015,
hereinafter “Final Act.”), rejecting claims 14—17, 22—25, 28, and 29.3 We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellants represent in their Appeal Brief (Apr. 18, 2016, hereinafter
“Appeal Br.”) the Real Party in Interest is International Business Machines
Corporation. Appeal Br. 3.
2 This appeal is related to Application 13/599,180, which is also before the
Board and has been assigned Appeal 2017-001304. See Appeal Br. 4.
3 Claims 1—13, 18—21, 26, and 27 have been canceled. Appeal Br. 27, 30,
31 (Claims App.).
Appeal 2017-005334
Application 13/408,547
CLAIMED SUBJECT MATTER
The subject matter of Appellants’ claimed invention relates to
“finding solutions to problems, concerns and questions” within a social
media platform by using a method that obtains a question; consults the
platform; ascertains the question legitimacy; harvests an answer to the
question from within the social media; and filters out the question if it is not
determined to be legitimate. Spec. 1—2.
Claims 14 and 15 are independent. Claim 14 is representative of the
claimed subject matter, and recites:
14. An apparatus comprising:
at least one processor; and
a computer readable storage medium having computer
readable program code embodied therewith and executable by
the at least one processor, the computer readable program code
comprising:
computer readable program code configured to establish
at least one legitimacy standard for filtering questions;
wherein the at least one legitimacy standard includes
presence of a question pattern and at least one exception
relative to the question pattern;
computer readable program code configured to
automatically obtain a question from at least one social media
conversation;
computer readable program code configured to ascertain
a legitimacy of the question, based on the at least one
legitimacy standard, via:
determining presence of a question pattern; and
determining presence of at least one exception to
the question pattern;
wherein the determined at least one exception to
the question pattern comprises at least one of: sentiment,
author reputation, nature of one or more responses to the
question, and a number of sentences relative to the
question;
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computer readable program code configured to harvest
from at least one social media conversation an answer to the
question, wherein the harvesting comprises:
harvesting an answer comprising at least one rich
media component taken from the group consisting of:
video content; audio content; picture content; and
harvesting text associated with the at least one rich
media component;
computer readable program code configured to obtain
metadata information associated with the at least one rich media
component; and
computer readable program code configured to filter out
the question if the question is not determined to be legitimate.
Appeal Br. 27—28 (Claims App.).
REJECTIONS
The following rejections are before us for review:
I. Claims 14—17 and 22—25 are provisionally rejected for non-
statutory obviousness-type double patenting as unpatentable
over claims 1—3, 8—13, and 16 of co-pending U.S. Application
No. 13/599,180.
II. The Examiner rejected claims 14—17, 22—25, 28, and 29 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter.
III. The Examiner rejected claims 14—17, 22—25, 28, and 29 under
35 U.S.C. § 112, second paragraph, as being indefinite.
IV. The Examiner rejected claims 14—17, 22—25, 28, and 29 under
35 U.S.C. § 103(a) as unpatentable over Sathish
(US 2011/0082825 Al, pub. Apr. 7, 2011) and Duboue
(US 2011/0125734 Al, pub. May 26, 2011).
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ANALYSIS
Rejection I— Double Patenting
The Examiner determines claims 14—17, 22—25, 28, and 29 are not
patentably distinct over claims 1—3, 8—13, and 16 of co-pending U.S.
Application No. 13/599,180 (hereinafter, “the ’180 Application”) “because
the claims in the [’180 Application] are merely the method implementation
of the claims in the instant application.” Final Act. 3. Appellants,
challenging the Examiner’s non-statutory double patenting determination,
simply state, “the claim language from [the related applications is] not
identical and are patently distinct,” without identifying any distinguishing
claim language. Appeal Br. 11. Appellants assert further that, “even if the
claim language [were] similar, the claims fall under two statutorily distinct
classes.” Id. at 11—12. However, no authority is cited suggesting this fact is
determinative, nor are we aware of any such authority. As a result, we only
have Appellants’ naked assertions that the Examiner’s obviousness-type
double patenting rejection is improper, which is unpersuasive for the
following reasons.
The doctrine of obviousness-type double patenting is intended to
prevent the extension of the term of a patent by prohibiting the issuance of
claims in a second patent not patentably distinct from the claims of a first
patent. See In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985). “A later patent
claim is not patentably distinct from an earlier claim if the later claim is
obvious over, or anticipated by, the earlier claim.” Eli Lilly & Co. v. Barr
Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001). Just as the inquiry under
35 U.S.C. § 103(a) requires us to consider the claimed subject matter “as a
whole,” so too must we consider whether the currently claimed subject
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matter “as a whole” is non-obvious over the claimed subject matter of the
co-pending application. Eli Lilly & Co. v. Leva Parenteral Medicines, Inc.,
689 F.3d 1368, 1377 (Fed. Cir. 2012).
Having compared the claims from the related applications, we agree
with the Examiner’s following findings and rationale:
While the claims do fall under different statutory classes, the
claims are substantially similar except that the instant application
recites apparatus and computer program product, respectively, in
claims 14 and 15, while the other application recites the method
in claim 1. The body of the claims and the claims as a whole
overlap significantly in scope such that there are no patentable
distinction^]; the claims essentially are obvious variants of each
other even if their respective preambles are different.
Ans. 3. The only significant difference between the claims of the co­
pending applications is that the current application recites a computer
readable program code stored within a non-transitory computer memory
whereas the ’ 180 Application recites utilizing a processor to execute
computer code, but nonetheless, both recite computer code that cause a
computer to perform substantially the same operations. These differences
are not patentably distinct. Therefore, we sustain the Examiner’s decision to
provisionally reject claims 14—17, 22—25, 28, and 29 for non-statutory
obviousness-type double patenting.
Rejection II — Patent-Ineligible Subject Matter
The Examiner determines claims 14—17, 22—25, 28, and 29 are
“directed to an abstract idea,” which do not claim “anything significantly
more than an idea in and of itself.” Final Act. 3^4. Appellants contend
claim 14 “precludes any reasonable interpretation of the claim as being
directed to an abstract idea” because it is “directed to a particular technique
of obtaining, legitimizing, and answering questions to be added to a
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knowledge base that adds functionality to a computer.” Appeal Br. 16.
Furthermore, even if an abstract idea, Appellants submit the claims are
patent eligible because “specific limitations other than what is well-
understood, routine and conventional in the field” are recited. Id. at 17. In
this appeal, Appellants neither argue for the eligibility of any other claim if
claim 14 is ineligible nor present any meaningful arguments for the
distinctive significance of any claim limitation other than those included in
claim 14. For the following reasons, Appellants’ challenges are not
persuasive.
Section 101 of the Patent Act defines patent-eligible subject matter:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In interpreting this statutory
provision, the Supreme Court has held that its broad language is subject to
an implicit exception for “laws of nature, natural phenomena, and abstract
ideas,” which are not patentable. Alice Corp. Pty. Ltd. v. CLS Banklnt’l,
134 S. Ct. 2347, 2355 (2014).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice,
134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 132 S. Ct. 1289, 1294 (2012)). According to the Supreme Court’s
framework, we must first determine whether the claims at issue are directed
to one of those concepts (i.e., laws of nature, natural phenomena, and
abstract ideas). Id. If so, we must secondly “consider the elements of each
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claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. The Supreme Court characterizes the
second step of the analysis as “a search for an ‘inventive concept’ — i.e., 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.’” Id.
The Examiner finds Electric Power Group v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016), applying the above framework, to be instructive.
Ans. 4. We agree. The patents in that case “describe and claim systems and
methods for performing real-time performance monitoring of an electric
power grid by collecting data from multiple sources, analyzing the data, and
displaying results.” Id. at 1351.
Applying the first prong of the framework for considering patent
eligibility, the Federal Circuit observed that its precedent has “treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas.” Id. at 1353. Moreover, “analyzing information by steps people go
through in their minds, or by mathematical algorithms” have also been
treated “as essentially mental processes within the abstract-idea category.”
Id. at 1354. Because the claims focused on processing information itself and
the use of a computer as a tool to improve that process, the Federal Circuit
held the claims were properly characterized as being directed to an abstract
idea rather than to an improvement of computer functionality. Id.
Evaluating the second prong the patent eligibility framework, the
Federal Circuit held, “merely selecting information, by content or source, for
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collection, analysis, and display does nothing significant to differentiate a
process from ordinary mental processes, whose implicit exclusion from
§101 undergirds the information-based category of abstract ideas.” Id. at
1355. The Court focused more acutely on the claim language for this prong
and noted that no new data was generated because it did not require a new
source or type of information, or new techniques for analyzing it, nor did
they invoke any inventive programming. Id. “Merely requiring the
selection and manipulation of information ... by itself does not transform
the otherwise-abstract processes of information collection and analysis.” Id.
Lastly, looking at how the claims achieved the desired results, the Court
found nothing transformative because they only used conventional, generic
computer technology. Id. at 1355—56.
Similar to the claims in Electric Power Group, the Examiner finds
Appellants’ claims are directed to harvesting information by collecting,
comparing, and organizing intangible data. Final Act. 4. Not inconsistent
with this finding, Appellants characterize the claims as “directed to a
particular technique of obtaining, legitimizing, and answering questions to
be added to a knowledge base that adds functionality to a computer.”
Appeal Br. 16. Although Appellants argue that this characterization
“precludes any reasonable interpretation of the claim as being directed to an
abstract idea,” the contrary is true. Id. Appellants’ characterization
confirms the claims focus on processing information and using a computer
as merely a tool to improve that process, which the Federal Circuit has held
is an abstract idea rather than to an improvement of computer functionality.
Electric Power Group, 830 F.3d at 1354.
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Appellants argue further that the claims recite a technique for creating
an “enhanced knowledgebase,” which cannot be included within the gambit
of “abstract ideas” because it is “necessarily rooted in computer
technology.” Appeal Br. 16 (quoting DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). But, we are not persuaded this
is the case. Appellants’ claim 14 recites a processor and a computer
readable storage medium having computer readable code, which is
configured to cause the computer to perform a series of steps, such as
“automatically obtain a question,” “ascertain a legitimacy of the question,”
“harvest... an answer to the question,” “obtain metadata information,” and
“filter out the question if the question is not determined to be legitimate.”
Appeal Br. 27—28 (Claims App.). While an “enhanced knowledgebase” may
be created, Appellants’ claims are directed to generalized steps to be
performed on a computer using conventional computer activity, which is not
patent eligible. Two-Way Media Ltd. V. Comcast Cable Comms., LLC, 874
F.3d 1329, 1337 (Fed. Cir. 2017).
Finding no error with the Examiner’s determination that Appellants’
claims are directed to an abstract idea, we turn to whether the claims include
something that transforms them into a patent-eligible application of the
abstract idea. The Specification states the claimed subject matter “can be
carried out on or in accordance with essentially any suitable computer
system or set of computer systems.” Spec. | 14. The Examiner finds the
claims require nothing more than, “a generic computer performing generic
computer functions, mere instructions to implement an abstract idea on a
computer, and/or limitations that are well-understood, routine, and
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conventional in the field such as filtering out questions based on
legitimacy.” Final Act. 4. Additionally, the Examiner finds,
The claims in this case specify what information in the
knowledgebase field it is desirable to gather, analyze, and
display, including “filtering out” information; but they do not
include any requirement for performing the claimed functions of
gathering, analyzing, and displaying by use of anything but
entirely conventional, generic technology. The claims therefore
do not state an arguably inventive concept in the realm of
application of the information-based abstract ideas.
Ans. 5. Appellants fail to apprise us of any error with the Examiner’s
findings, nor is an error evident. Appellants simply assert, without any
further evidence or analysis, the claims “add ‘significantly more’ to
obtaining a question from a social media conversation, evaluating the
legitimacy of the conversation, and harvesting an answer to the question,”
which we find unpersuasive. Appeal Br. 17.
In summary, Appellants have not shown persuasively any errors with
the Examiner’s determination claims 14—17, 22—25, 28, and 29 cover patent-
ineligible subject matter. Therefore, we sustain the Examiner’s rejection of
these claims.
Rejection III—Indefiniteness
The Examiner concludes claims 14—17, 22—25, 28, and 29 are
indefinite under 35 U.S.C. § 112, second paragraph, because the
specification does not definitively define what the structure is for the
“computer readable program code” phrased limitations, which flows from
the Examiner’s initial conclusion that these phrases are properly construed
as means-plus-fimction limitations pursuant to 35 U.S.C. § 112, sixth
paragraph. Final Act. 6—8. Thus, before considering the Examiner’s
indefmiteness conclusion, we must consider whether 35 U.S.C. § 112, sixth
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paragraph, was properly invoked. If the claims are not properly construed as
means-plus-function limitations, then the indefiniteness rejection cannot be
sustained because the Examiner has not suggested the claim language itself
is unclear.4
The word “means” is not recited in the claims. As a result, there is a
presumption that the limitation is not a means-plus-fimction limitation that
should be construed in accordance with §112, sixth paragraph. Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (“When
a claim term lacks the word ‘means,’ the presumption can be overcome and
§112, para. 6 will apply if the challenger demonstrates that the claim term
fails to ‘recite[] sufficiently definite structure’ or else recites ‘function
without reciting sufficient structure for performing that function.’” (citation
omitted)). Here, the Examiner simply concludes “computer readable
program code” with the recited operations is properly viewed as a mean-
plus-function limitation. No evidence is provided, nor a persuasive
explanation, why a skilled artisan would view this language as lacking
sufficient structure to perform the recited operations. On the current record,
4 In the Answer, the Examiner remarks, “[f]or the sake of argument, in the
event that it is unclear whether the claim limitation falls within the scope of
35 U.S.C. 112[, sixth paragraph], a rejection under 35 U.S.C. 112[, second
paragraph], may be appropriate.” Ans. 9 (citing MPEP § 2181, Part III). To
be clear, we do not understand any rejection pursuant to 35 U.S.C. 112,
second paragraph, to be before us separate and apart from the Examiner’s
determination that the Specification fails to satisfy the requirements of 35
U.S.C. 112, sixth paragraph. The only ambiguity with the claim language
identified by the Examiner relates to the alleged failure of the Specification
to clearly link structure to the recited functions, which necessarily depends
on the claims being properly considered to invoke 35 U.S.C. 112, sixth
paragraph.
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there is insufficient persuasive argument or evidence to overcome the
presumption that means-plus-fimction claiming under 35U.S.C. § 112, sixth
paragraph, is not invoked. As a result, the Examiner erred by construing the
“computer readable program code” limitations as means-plus-fimction
limitations. Therefore, we do not sustain the Examiner’s indefiniteness
rejection of claims 14—17, 22—25, 28, and 29.
Rejection IV— Obviousness
The Examiner’s obviousness determination of claims 14 and 15
depend on a finding that Sathish teaches a computer readable program code
configured to: (1) “establish at least one legitimacy standard for filtering
questions(2) “automatically obtain a question from at least one social
media conversation;” (3) ascertain a legitimacy of the questionand (4)
“filter out the question if the question is not determined to be legitimate.”
Final Act. 8 (emphasis added). The Examiner finds Sathish discloses these
limitation in paragraphs 23, 24, 26, 45, 51, 92, 95, and 99. Id. Appellants
disagree those paragraphs “have [anything] to do with establishing a
legitimacy standard for filtering questions.” Appeal Br. 21—22 (emphasis
added).
The Examiner counters by suggesting Appellants ignore the context in
which the supporting evidence is found in Sathish. Ans. 10. To set the
context for considering how Sathish discloses a legitimacy standard for
filtering questions, the Examiner notes the invention of Sathish “is
concerned with the ever expanding amount of data contributed by end users
such as Internet question posting.” Id. (citing Sathish 123). The Examiner
describes Sathish as ultimately addressing this concern by using a co­
creation platform that “matches content generating assignments (e.g.,
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Internet question posting, answering information requests) with
users/experts who can undertake the assignments; the matching links
expertise tags with assignment tags.” Id. (citing Sathish || 24, 26).
“With this context in mind,” the Examiner explains a skilled artisan
would understand paragraph 45 of Sathish “teaches that matches against user
expertise models using a category of model associated with specific
characteristics that may include expertise categories” and paragraph 51
“teaches that the user model can also be used for secondary fine grained
filtering; media houses then can choose from a set of categories that describe
the expected expertise from user candidates.” Id. Therefore, the Examiner
concludes, “the steps described by Sathish essentially allow for establishing
a legitimacy standard (expected expertise) for filtering questions (the chosen
categories may then be used to derive assignment tags against which the user
expertise models may be applied).” Id.
The Examiner notably has not offered any reasonable interpretation of
claims 14 and 15 that would extend its scope to include what Sathish
discloses, nor is it readily apparent such a construction is available.
Although we appreciate Sathish filters information based on criteria
introduced by a query, the Examiner has not shown persuasively Sathish
takes any steps to filter the queries themselves. Claims 14 and 15 require a
legitimacy standard to filter the questions themselves and exclude the
questions determined to be illegitimate. The Examiner’s findings Sathish
discloses this functionality lacks evidentiary support. Therefore, we do not
sustain the Examiner’s obviousness determination of claim 14—17, 22—25,
28, and 29.
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DECISION
We affirm the Examiner’s provisional rejection of claims 14—17 and
22—25 for non-statutory double patenting over co-pending U.S. Application
No. 13/599,108.
We affirm the Examiner’s rejection of claims 14—17, 22—25, 28, and
29 as directed to patent-ineligible subject matter.
We reverse the Examiner’s rejection of claims 14—17, 22—25, 28, and
29 as being indefinite.
We reverse the Examiner’s rejection of claims 14—17, 22—25, 28, and
29 as unpatentable over Sathish and Duboue.
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)(l)(iv).
AFFIRMED
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