Ex Parte Anand et al

Patent Trial and Appeal Board

Aug 29, 2017

14075796 (P.T.A.B. Aug. 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.
14/075,796 11/08/2013 Rangachari Anand 0464-014/YQR920100458US2 7403
55459 7590 08/31/2017
PATENT PORTFOLIO BUILDERS, PLLC
P.O. BOX 7999
Fredericksburg, VA 22404
EXAMINER
MCFADDEN, SUSAN IRIS
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
Mailroom @ PPBLAW. com
T ripp @ PPBLAW. com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANGACHARI ANAND, JUHNYOUNG LEE,
ERIK THOMAS MUELLER, and MELVIN PEREZ-CEDANO
Appeal 2017-002544
Application 14/075,7961
Technology Center 2600
Before ELENI MANTIS MERCADER, SCOTT B. HOWARD, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. (App. Br. 2.)
Appeal 2017-002544
Application 14/075,796
STATEMENT OF THE CASE
Introduction
According to the Specification, Appellants’ invention is “directed to
systems and methods that diagnose problems by asking a series of
questions.” (Specification (filed November 8, 2013) (“Spec.”) 17.) Claim 1
is illustrative, and is reproduced (with minor formatting changes) below:
1. A method for conducting an expert conversation, the
method comprising:
constructing a knowledge database comprising a dialogue
repository comprising a plurality of dialogues,
each dialogue representing a framework for creating at
least one expert conversation and comprising a plurality of nodes
and a plurality of edges extending between pairs of nodes; and
using the dialogue repository in combination with a
runtime dialogue system executing on a computing system and
in communication with the knowledge database to conduct the
expert conversation between the runtime dialogue system and a
user by using the plurality of nodes as turning points in the expert
conversation to exchange information between the runtime
dialogue system and the user, to use the exchanged information
to identify appropriate edges at each node and to extend the
expert conversation across the identified appropriate edges
through the plurality of nodes.
Prior Art and Rejections on Appeal
The following is the prior art relied upon by the Examiner in rejecting
the claims on appeal:
Anand et al.
(“Anand”) US 8,612,233 B2 Dec. 17,2013
2
Appeal 2017-002544
Application 14/075,796
Claims 1—20 stand rejected under 35U.S.C. § 101 because the claims
are not directed to patent eligible subject matter. (See March 4, 2016 Final
Action (“Final Act.”) 2—3.)
Claims 1—18 stand rejected on the ground of non-statutory double
patenting as being unpatentable over claims 1—25 of Anand. (Final Act. 3—
5.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
positions.
Patent Eligibility
The Examiner rejects claims 1-20 under 35 U.S.C. § 101 because the
claims are not directed to patent eligible subject matter. (Final Act. 2—3.)
According to the Examiner:
In regard to Alice, a two[-]part test is performed. Are the
claims related to an Abstract idea? Yes, there is just a
“processing of data” (constructing, creating, and identifying).
The second part is “Are there any elements sufficient to ensure
that the claims amount to significantly more that than abstract
idea itself?” In this case, the answer is No. They are mere
instructions/algorithms for generating data.
(Id. at 3.) Appellants contend that the Examiner failed to establish a prima
facie case and to identify the abstract idea adequately. (App. Br. 6—9.)
According to Appellants, the Examiner failed to adhere to the various
guidance and memorandums on patent eligibility issued by the Office in
2014 through 2016. (Id. at 6—8.)
3
Appeal 2017-002544
Application 14/075,796
Appellants, however, have not persuaded us that the Examiner erred.
In patent prosecution, a burden-shifting procedure occurs between the
Examiner and the applicant, which is “merely a procedural device that
enables an appropriate shift of the burden of production.” In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011) (citation omitted). The Examiner carries
the initial burden of establishing a prima facie case of unpatentability “by
adequately explaining] the shortcomings it perceives so that the applicant is
properly notified and able to respond.” Id. The statement of the prima facie
case, however, “need not be a full exposition on every conceivable
deficiency of a claim. . . . Rather, its purpose is simply to provide sufficient
notice to the applicant to facilitate his effective submission of information.”
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). Here, the Examiner
performed the two-part Alice test by identifying the abstract idea (i.e., the
“‘processing of data’ (constructing, creating, and identifying)”) and
determining whether “the claims amount to significantly more that than
abstract idea itself’ (i.e., “No[, because t]hey are mere
instructions/algorithms for generating data.”). (Final Act. 3.) Therefore, we
find that the Examiner has established a prima facie case.
We are similarly not persuaded by Appellants’ contention that the
Examiner failed to adhere to the various guidance and memorandums on
patent eligibility issued by the Office from 2014 through 2016. First, we
note that the various guidance and memorandums Appellants point to are
simply guidance to the Examiner. Second, the May 6, 2016 Memorandum
Appellants point to, and cite throughout their briefing, was issued after the
March 4, 2016 Office Action. Importantly, the Board is not bound by these
guidance and memorandums but rather by legal precedence on this issue (for
4
Appeal 2017-002544
Application 14/075,796
example, as discussed above, the Federal Circuit’s decision in In re Jung).
(See also December 16, 2014 New Interim Guidance on Patent Subject
Matter Eligibility (“This Interim Eligibility Guidance does not constitute
substantive rulemaking and does not have the force and effect of law. . . .
This Interim Eligibility Guidance has been developed as a matter of internal
Office management and is not intended to create any right or benefit,
substantive or procedural, enforceable by any party against the Office.
Rejections will continue to be based upon the substantive law, and it is these
rejections that are appealable.”).)
Whether an invention is patent-eligible is an issue of law, which we
will review de novo. An invention is patent-eligible if it claims a “new and
useful process, machine, manufacture, or composition of matter.” 35 U.S.C.
§101. The Supreme Court, however, has long interpreted § 101 to include
implicit exceptions: “[ljaws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBanklnt’l, 134
S. Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“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.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
5
Appeal 2017-002544
Application 14/075,796
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 67. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores,” and a process
for manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an “inventive concept”—an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
6
Appeal 2017-002544
Application 14/075,796
With regard to the first step of Alice, the Examiner finds the claims
are directed to an abstract idea of‘“processing of data’ (constructing,
creating, and identifying).” (Final Act. 3.) Specifically, according to the
Examiner:
the claim elements of constructing a knowledge database
comprising a plurality of dialogues and determining edges and
nodes, and by using the plurality of nodes as turning points in the
expert conversation to exchange information between the
runtime dialogue system and the user, to use the exchanged
information to identify appropriate edges at each node and to
extend the expert conversation across the identified appropriate
edges through the plurality of nodes are mathematical
calculations, (paragraph 028 shows that the edges and nodes can
be calculated and displayed in a Directed Acyclic Graph (DAG)).
the additional claim elements in claims 1—20, that are not
mathematical relationships, such as the knowledge database,
dialogue repository, and computing system are generic
computing elements performing generic computing functions
and not considered significantly more (Fed. Reg. Vol 79, No.
241, Dec. 16, 2014, see pp 7 4624, third column, second bullet
point).
(Ans. 7—8.) Appellants contend that the “May 16, 2019 [sic] Memorandum
makes is [sic] clear that the ‘Federal Circuit. . . stated that. . . improvements
in computer-related technology ... are not necessarily abstract’.” (App. Br.
12—13.) According to Appellants, the claims are not abstract because:
the claimed invention recites specific elements that are used to
construct a conversation between two parties, for example, in
real time. As conversations such as technical support or
customer assistance are conducted over computer networks and
telephone networks, the claimed invention is performed using
computers. In fact, the claimed invention recites a runtime
dialogue system executing on a computing system. Therefore,
7
Appeal 2017-002544
Application 14/075,796
the claimed invention can be viewed as an improvement in
computer related technology.
{Id., emphasis added.) Appellants have not persuaded us that the claims are
directed to a specific improvement to computer-related technology instead of
use of a computer in its ordinary capacity. Just because the conversations
“are conducted over computer networks and telephone networks [and] the
claimed invention is performed using computers [in] runtime” does not
mean that the claims are directed to a specific improvement to computer-
related technology. Moreover, the alleged “improvements in computer
technology” is mere attorney argument and a conclusory statement, which is
unsupported by factual evidence, and, thus is entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Regarding step two of Alice, Appellants argue that, “the claimed
invention is an improvement in the technical field of constructing an expert
conversation between and expert and a user that can be compared to existing
devices, represents sufficiently more that the judicial exception and is
patent-eligible.” (App. Br. 15.) According to Appellants, “[t]he claimed
invention also is not directed to the use of nodes and edges, for example as
found in a tree-like structure, but the leveraging of a node and edge structure
and exemplary dialogues through the nodes and edges to construct a
conversation, i.e., a particular path through the nodes and edges.” (Id. at 15-
lb.) Appellants contend that “[t]his use of the node and edge structure and a
dialogue repository produces markedly improved results when compared to
conventional methods of constructing expert conversations.” (Id.) We are
not persuaded by Appellants’ argument because the alleged “markedly
improved results when compared to conventional methods of constructing
8
Appeal 2017-002544
Application 14/075,796
expert conversations” is mere attorney argument and a conclusory statement,
which is unsupported by factual evidence, and, thus is entitled to little
probative value. In re Geisler, 116F.3dat 1470.
We are also not persuaded of error on the part of the Examiner by
Appellants’ argument that “the claimed invention does not inhibit further
discovery by preempting the ‘building blocks of human ingenuity.’” (App.
Br. 17.) “[Although] preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—
63 (Fed. Cir.), cert, denied, 136 S.Ct. 701, 193 (2015) (“[TJhatthe claims do
not preempt all price optimization or may be limited to price optimization in
the e-commerce setting do not make them any less abstract.”). And,
“[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d
at 1379.
For the foregoing reasons, because claims 1—20 are directed to an
abstract idea and nothing in the claims adds an inventive concept, the claims
are not patent-eligible under § 101. Therefore, we sustain the 35 U.S.C.
§101 rejection of claims 1—20.
Double Patenting
The Examiner rejects claims 1-20 on the ground of non-statutory
double patenting as being unpatentable over claims 1—25 of Anand. (Final
Act. 3—5.) Appellants do not respond to the Examiner’s substantive findings
9
Appeal 2017-002544
Application 14/075,796
but instead state that “Appellants will file a Terminal Disclaimer upon an
indication of allowable subject matter in response to this Appeal.” Because
Appellants do not challenge the Examiner’s findings on this issue, we
summarily affirm the Examiner’s double patenting rejection of claims 1-20.
DECISION
We affirm the decision of the Examiner to reject claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
10