Ex Parte Andrews et al

Patent Trial and Appeal Board

Sep 28, 2018

13337703 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/337,703 12/27/2011
79804 7590 10/02/2018
Duncan Galloway Egan Greenwald, PLLC
9750 Ormsby Station Road, Suite 210
Louisville, KY 40223
FIRST NAMED INVENTOR
Sarah L. Andrews
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
113027.000070US1 4627
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
kduncan@dgeglaw.com
carnold@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH L. ANDREWS, PEENAKI DAM,
DAMIEN FRENNEL, SUMMIT CHAUDHURL,
RICARDO RODRIGUEZ, ASH OK GANSP AM, FRANK SCHILDER, and
JOCHEN LOTHAR LEIDNER
Appeal2017-008070
Application 13/337,703 1
Technology Center 3600
Before CARLA A. KRIVAK, HUNG H. BUI, and
NABEEL U. KHAN, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1--46, which are all the claims pending
in the application. Claims App. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm. 2
1 Appellants identify the real party in interest as Thomson Reuters Global
Resources. App. Br. 1.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed January
9, 2017; Reply Brief ("Reply Br.") filed May 9, 2017; Examiner's Answer
("Ans.") mailed March 9, 2017; Final Office Action ("Final Act.") mailed
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Application 13/337,703
STATEMENT OF THE CASE
Appellants' invention relates to "methods and systems for generating
corporate green score using social media sourced data and sentiment
analysis." Spec., title. According to Appellants, "a News/Media Analytics
System (NMAS) [is] adapted to automatically process and 'read' news
stories and content from blogs, twitter, and other social media sources,
represented by news/media corpus, in as close to real-time as possible" and
apply "one or more models against the content to determine green scoring
and/or anticipate behavior of stock price and other investment vehicles"
"to provide a sentiment-based solution for scoring the 'greenness' of
companies." Abstract.
Claims 1, 21, and 40 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below with disputed limitations in
italics:
1. A computer implemented method for near real-time
processing of data to derive one or more outputs for action by a user,
the method comprising:
(a) identifying by a computer an entity to which a green
score will be assigned;
(b) identifying and collecting by the computer a set of social
media information related to the identified entity from a plurality of
data sources over a network connection;
( c) performing a sentiment analysis on the set of social
media information related to the identified entity, the sentiment
analysis including a text based sentiment analysis of the first set of
social media information;
( d) determining by a computer a sentiment score based at
least in part on the performed sentiment analysis including the text
based sentiment analysis;
August 5, 2016; and original Specification ("Spec.") filed December 27,
2011.
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( e) calculating by a computer the green score based at least
in part upon the determined sentiment score and a predictive model as
applied to the determined sentiment score, and wherein the green
score represents a green sentiment score;
(f) transmitting by a computer the green score;
(g) subsequently performing a sentiment analysis on a
second set of social media information related to the identified entity,
the sentiment analysis including a text based sentiment analysis of the
first set of social media information;
(h) determining by a computer a second sentiment score
based at least in part on the performed sentiment analysis including
the text based sentiment analysis; and
(i) calculating by a computer an adjusted green score based
at least in part upon the determined second sentiment score and a
predictive model as applied to the determined second sentiment score,
and wherein the adjusted green score represents an adjusted green
sentiment score.
App. Br. 32 (Claims App.).
EXAMINER'S REJECTIONS & REFERENCES
Claims 1 and 24 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite. Final Act. 7-8.
Claims 1--46 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 5-7.
Claims 1, 4, 6, 10, 14--17, 19, 22, 24, 27, 29, 33, 37--40, 42, and 45
stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Ouimet
et al. (US 2008/0243716 Al; published Oct. 2, 2008; "Ouimet") and
Holtzman et al. (US 2007/0124432 Al; published May 31, 2007;
"Holtman"). Final Act. 8-26.
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Claims 2 and 25 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ouimet, Holtzman, and Roberts (US 2009/0171722 Al;
published July 2, 2009). Final Act. 26-28.
Claims 3, 7, 13, 26, 30, 36 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Ouimet, Holtzman, and Office Notice. Final Act.
28-31.
Claims 5 and 28 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ouimet, Holtzman, and Beldock (US 6,490,565 B 1;
issued Dec. 3, 2002). Final Act. 31-33.
Claims 8, 9, 31, and 32 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Ouimet, Holtzman, and Lawrence et al. (US
2006/0004878 Al; published Jan. 5, 2006; "Lawrence"). Final Act. 33-36.
Claims 11, 12, 34, and 35 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Ouimet, Holtzman, and Wilson (US 2009/0271325
Al; published Oct. 29, 2009). Final Act. 36-39.
Claims 18 and 41 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ouimet, Holtzman, and Hoogs et al. (US 2005/0071217
Al; published March 31, 2005; "Hoogs"). Final Act. 39--41.
Claims 20, 21, 43, and 44 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Ouimet, Holtzman, and Wennberg (US
2006/0129427 Al; published June 15, 2006). Final Act. 41--45.
Claims 23 and 46 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ouimet, Holtzman, Beldock, and Roberts (US
2009/0171722 Al; published July 2, 2009). Final Act. 45--47.
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ANALYSIS
35 US.C. § 112, Second Paragraph: Claims 1 and 24
In rejecting claims 1 and 24, 3 the Examiner finds the term "near real-
time processing" is relative and, as such, is indefinite. Final Act. 8.
Appellants argue the word "near" used in the context of "near real-
time processing" is described in paragraphs 17,19, 41, 50, 54, 78, 82, and
107 of Appellants' Specification and is well known in the art, as "denoting
or relating to a data-processing system that is slightly slower than real-time."
App. Br. 21-22. For example, paragraph 47 describes that near real-time
processing may take place within 150ms, and the term "near real-time
processing" or "real-time processing" is used consistently throughout
Appellants' Specification to refer to processing that occurs in close to real
time, i.e., not hours or days after an event has occurred. Reply Br. 3.
We agree with Appellants. The standard for indefiniteness is set forth
in Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576
(Fed. Cir. 1986): "A decision on whether a claim is invalid under§ 112, 2d
,r, requires a determination of whether those skilled in the art would
understand what is claimed when the claim is read in light of the
specification."
We agree with Appellants that a skilled artisan would understand the
term "near real-time processing" in the context of Appellants' Specification.
3 In the Final Action, the Examiner also asserts the terms "sentiment" and
"green sentiment" are subjective and, as such, are indefinite. Final Act. 7.
However, this assertion has been withdrawn in the Examiner's Answer (Ans.
4). As such, we need to address whether these terms are indefinite.
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As such, we do not sustain the Examiner's § 112, ,r 2, rejection of claims 1
and 24.
35 US.C. § 101: Claims 1-46
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 79 (2012), "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. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "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. (quoting Mayo, 566 U.S. at 72-73).
In rejecting claims 1-10, 12-30, 32--40, and 42--48 under 35 U.S.C.
§ 101, the Examiner determines (1) these claims are directed to an abstract
idea of "calculating a green score [ of an entity]" based on received data
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(Final Act. 6), and includes limitations that are nothing more than "steps for
gathering data and manipulating data to calculate a green score" (Ans. 5) and
(2) the additional elements in the claims, whether taken separately or in an
ordered combination, are all steps for data manipulation and data reporting
related to calculating a green score that do not amount to significantly more
than the abstract idea, because (i) "the claims do not recite an improvement
to another technology or technical field, nor do they recite an improvement
to the functioning of the computer itself' and (ii) "the claims require no
more than a generic computer ... to perform generic computer functions
that are well-understood, routine, and conventional activities previously
known to the industry." Final Act. 6-7; Ans. 4--5. The Examiner also
determines these claims are directed to an abstract idea because the process
recited in these claims can be implemented mentally or performed manually
by a human with pen and pencil. Ans. 6; see also CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011).
At the outset, Appellants argue "claim 1 recites statutory subject
matter pursuant to 35 U.S.C. § 101" under the so-called "machine-or-
transformation" (MoT) test established by the Federal Circuit in In re Bilski,
545 F.3d 943, 954 (Fed. Cir. 2008) ( en bane). Under Bilski 's MoT test, a
claimed process can be considered patent-eligible under § 101 if: (1) "it is
tied to a particular machine or apparatus"; or (2) "it transforms a particular
article into a different state or thing." Bilski, 545 F.3d at 954 (citing
Gottschalk, 409 U.S. at 70, 93 S. Ct. 253). However, Appellants' reliance
on the MoT test is misplaced.
In In re Bilski, the Federal Circuit adopted a "machine-or-
transformation" (MoT) test to determine whether a process claim is eligible
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under 35 U.S.C. § 101. However, the Supreme Court held, in Bilski v.
Kappas, 130 S. Ct. 3218, 3227 (2010), that the "MoT" test, while a "useful
and important clue," is no longer the sole test for determining the patent-
eligibility of process claims under§ 101. Since Bilski v. Kappas, the
Supreme Court has created a two-step framework in Alice, 134 S. Ct. at
2354 to address whether a claim falls outside of§ 101, which we discuss
infra. 4
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue "the
Examiner's characterization of the claim is overly broad," citing Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and a memorandum from
Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, to
Patent Examining Corps, Recent Subject Matter Eligibility Decisions (May
19, 2016), which warn against "describing the claims at such a high level of
abstraction and untethered from the language of the claims" and suggest
such an abstraction will "all but ensure[] that the exceptions to § 101
swallow the rule." App. Br. 11 (quoting Enfish, 822 F.3d at 1336).
According to Appellants, "[t]he subject matter of the claimed invention is far
removed from the concepts of risk hedging, intermediated settlement, and
fundamental mathematical algorithms and does not involve a 'fundamental
4 As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 716 (Fed. Cir. 2014), Bilski 's "machine-or-transformation"
(MoT) test can also provide a "'useful clue"' in the second step of the Alice
framework. See In re Bilski,4 545 F.3d 943, 954 (Fed. Cir. 2008) (en bane).
However, Appellants' method claim 1 and its corresponding system claim
24 are neither sufficiently "tied to a particular machine or apparatus" nor
involved in any type of transformation of any particular article for reasons
discussed infra.
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economic practice' or 'method of organizing human activity."' App. Br. 10-
1 1.
Appellants then argue "Claim 1 is not merely directed towards an
abstract idea" because:
( 1) the Supreme Court's decision in Alice "narrowed the concept of
'abstract ideas' to those concepts which are "so old and
entrenched as the concepts of "hedging risk or using a
settlement intermediary" [ as outlined in claims of Bilski and
Alice] whereas the subject matter of Appellants' claims is a
modem concept outside the scope of what is an "abstract idea"
and is "far removed from the concepts of risk hedging and
intermediated settlements and solves a problem unique to
determining the greenness of a public or private entity by
processing new stories, filings, new/social media and other
content available and quickly interpreting this content to assess
the environmental impact of that entity" (App. Br. 11-12);
(2) "[l]ike the claims at issue in Enfzsh and [McRO, Inc. v. Bandai
Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016)],
the claimed invention provides a technological improvement
that is not directed towards an abstract idea. The claimed
method provides an improvement over the prior art methods by
at least identifying, processing and calculating results in near
real-time from numerous different sources comprising large
corpuses of data, such as social media sites or news filings"
(App. Br. 12); and
(3) like DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellants' "invention also solves a problem
specific to the computer or virtual environment, one specific to
the Internet that did not exist before the advent of computers
and computer technology" and "cannot possibly be achieved by
a human using mental steps or on pen and paper." (App. Br. 14)
App. Br. 11-14. According to Appellants, "identifying, collecting,
calculating, determining, performing and transmitting of a green score and
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adjusted green score of the present invention solves a problem specific to the
computer field not related to the alleged abstract idea." App. Br. 13.
Appellants' arguments are not persuasive. At the outset, we note
Appellants' characterizations of the Supreme Court's decision in Al ice and
the Federal Circuit's decisions in Enfzsh and McRO are incorrect. The
Supreme Court's decision in Alice is not limited to those "business method"
concepts that are old, "fundamental and long prevalent" such as "the risk
hedging claims of Bilski and the intermediate settlement concept at issue in
Alice," as Appellants argue. App. Br. 11. Rather, as recognized by the
Examiner, the Federal Circuit has identified numerous examples of
"business method" concepts as "abstract ideas" that are not fundamental or,
long prevalent. Ans. 5 ( citing PTO' s examples located at
https://www.uspto.gov/sites/default/files/documents/ieg-duly-2015-qrs.pd:f).
Appellants' Specification is directed to "a system for automatically
processing or 'reading' news stories, filings, new/social media and other
content and for applying predictive models against the content to anticipate
behavior of stock price and other investment vehicles" "to provide a
sentiment-based solution that expands the scope of conventional tools to
include social media and online news." Spec. ,r 19; Abstract. Embodiments
of Appellants' Specification, such as depicted in Figures 3--4, describe a
process of processing news/social media (e.g., documents, messages, other
content) (Fig. 3, step 302), applying a sentiment analysis to arrive at a
sentiment score (Fig. 3, step 304), applying a predictive model using the
sentiment score to arrive at a green score (Fig. 3, step 310), and generating a
composite index of a set of green scores (Fig. 3, step 312). Thus, we agree
with the Examiner that the claims are directed to an abstract idea of
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"calculating a green score [of an entity]" based on received data. Ans. 5.
All the steps recited in Appellants' claim 1, including: (a) "identifying ... an
entity"; (b) "identifying and collecting ... a set of social media
information," ( c) "performing a sentiment analysis"; ( d) "determining . . . a
sentiment score"; ( e) "calculating ... the green score"; (f) "transmitting ...
the green score," (g) "subsequently performing a sentiment analysis"; (h)
"determining ... a second sentiment score"; and (i) "calculating ... an
adjusted green score" are abstract processes of collecting, storing, and
analyzing information of a specific content, e.g., news/media content
regarding an entity to calculate a green score associated with that entity.
Information, as such, is intangible, and data analysis, comparisons,
and algorithms, by themselves, are abstract ideas. See, e.g., Microsoft Corp.
v. AT & T Corp., 550 U.S. 437,451 n.12 (2007); Alice, 134 S. Ct. at 2355;
Parker v. Flook, 437 U.S. 584, 589, 594--95 (1978) ("Reasoning that an
algorithm, or mathematical formula, is like a law of nature, Benson applied
the established rule that a law of nature cannot be the subject of a patent");
Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972). "[C]ollecting
information, including when limited to particular content (which does not
change its character as information)," and "analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more," are "within the realm of abstract ideas." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see also Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); CyberSource, 654 F.3d at 1370. That is, "[w]ithout
additional limitations, a process that employs mathematical algorithms to
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manipulate existing information to generate additional information is not
patent eligible." Digitech, 758 F.3d at 1350-51 ("Data in its ethereal,
non-physical form is simply information that does not fall under any of the
categories of eligible subject matter under section 101 ").
As also recognized by the Examiner (Ans. 5), "calculating a green
score [ of an entity]" based on received data can also be performed mentally
or using a pen and paper. See CyberSource, 654 F.3d at 1373 ("[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under§ 101."); see also In re Comiskey, 554 F.3d 967,
979 (Fed. Cir. 2009) ("[M]ental processes-or processes of human thinking-
standing alone are not patentable even if they have practical application.");
Gottschalkv. Benson, 409 U.S. at 67 ("Phenomena of nature, ... , mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work" ( emphasis added)).
Additionally, mental processes remain unpatentable even when automated to
reduce the burden on the user of what could be done mentally with pen and
paper. Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266,
1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter."); CyberSource, 654 F.3d at
1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson."). Contrary to Appellants' arguments, all the steps
recited in Appellants' claim 1, including: (a) "identifying ... an entity"; (b)
"identifying and collecting ... a set of social media information," ( c)
"performing a sentiment analysis"; ( d) "determining . . . a sentiment score";
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( e) "calculating ... the green score"; (f) "transmitting ... the green score,"
(g) "subsequently performing a sentiment analysis"; (h) "determining ... a
second sentiment score"; and (i) "calculating ... an adjusted green score"
are nothing more than collecting, storing, and analyzing information of a
specific content that can also be performed mentally or using pen and paper.
Ans. 5.
Separately, and contrary to Appellants' arguments, Appellants' claims
1 and 24 do not improve the performance of a computer or solve a problem
specific to computers or computer networks. Appellants' Specification and
arguments do not demonstrate the claims "improve the way a computer
stores and retrieves data in memory," as the claims in Enfish did via a "self-
referential table for a computer database." See Enfzsh, 822 F.3d at 1336,
1339.
In fact, neither the steps recited in Appellants' claims 1 and 24, nor
the rest of Appellants' Specification supply any description or explanation as
to how these data processing steps are intended to provide: (1) a "solution ..
. necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks," as explained by the
Federal Circuit in DDR 773 F.3d at 1257; (2) "a specific improvement to the
way computers operate," as explained in Enfish, 822 F.3d at 1336; or (3) an
"unconventional technological solution ... to a technological problem" that
"improve[ s] the performance of the system itself," as explained in Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1301, 1302 (Fed. Cir.
2016).
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Accordingly, we agree with the Examiner that claims 1--46 are
directed to an abstract idea of "calculating a green score [ of an entity]" based
on received data.
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue the claim
elements, taken as a whole, amount to significantly more than an abstract
idea because: (1) "subject matter [that] provides something that cannot
possibly be done on pen and paper ... may be patentable subject matter,"
citing California Institute of Technology v. Hughes Communications, Inc.,
59 F. Supp. 3d 974 (C.D. Cal. 2014); (2) the claimed invention, i.e.,
"calculating by a computer the green score based at least in part upon the
determined sentiment score and a predictive model as applied to the
determined sentiment score, and wherein the green score represents a green
sentiment score" is a specific data structure that "is not a general purpose
computer and is not known in the art"; and (3) the "Examiner has not
considered each and every claim element of all the claims both
independently and as an ordered combination." App. Br. 14--18.
We disagree. At the outset, we note Appellants' reliance on
California Institute of Technology is misplaced because (1) district court
decisions are not binding legal authority on the Board, and (2) the district
court's holding that claims directed to "methods of error correction in data
transmission" were not directed to an abstract idea is not analogous to
Appellants' claims being directed to "calculating a green score [ of an
entity]" based on received data.
According to the Supreme Court in Alice, the second step is to "search
for an 'inventive concept'-i.e., an element or combination of elements that
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is 'sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 72-73). The Federal Circuit cases on point
include (1) DDR, F.3d at 1257 and (2) Amdocs, 841 F.3d 1288.
In DDR and Amdocs, the Federal Circuit opted to bypass Alice step 1
in favor of step 2. In particular, the Federal Circuit found DDR 's claims
contain an "inventive concept" under Alice step 2 because DDR 's claims
(1) do not merely recite "the performance of some business practice known
from the pre-Internet world," such as previously disclosed in Bilski and
Alice, but instead (2) provide a technical solution to a technical problem
unique to the Internet, i.e., a "solution ... necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." DDR, 773 F.3d at 1257. Likewise, the Federal
Circuit also found Amdocs ' claims contain a sufficient "inventive concept"
because similar to DDR, Amdocs' claims "entail[] an unconventional
technological solution ( enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases)" and "improve the performance of the system itself."
Amdocs, 841 F.3d at 1300, 1302.
Under current Federal Circuit precedent, an "inventive concept" under
Alice step 2 can be established by showing, for example, that the patent
claims:
(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks" (see DDR, 773 F.3d
at 1257);
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(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016); or
(3) "entail[] an unconventional solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1 and 24 that contains any "inventive concept"
or adds anything "significantly more" to transform the abstract concept into
a patent-eligible application. Alice, 134 S. Ct. at 2357. As discussed supra,
we are not persuaded the added computer elements (such as a processor,
memory, and various software module) can transform the abstract idea into a
patent-eligible invention. As our reviewing court has observed, "after Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible." DDR, 773 F.3d at
1256 (citing Alice, 134 S. Ct. at 2358)).
Additional Argument
Appellants argue that the claims do not preempt an entire field of
endeavor. App. Br. 13. However, this argument is not persuasive because,
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). "Where a patent's claims are deemed only to disclose patent
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ineligible subject matter" under the Alice/Mayo framework, "preemption
concerns are fully addressed and made moot." Id.
Because Appellants' claims 1 and 24 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
claims 1--46 under 35 U.S.C. § 101.
35 USC§ 103(a): Claims 1-46
In support of the obviousness rejection of claim 1 and similarly, claim
21, the Examiner finds (1) Ouimet teaches most aspects of Appellants'
claimed method, and (2) Holtzman teaches the missing features: "the
sentiment analysis [as] a text based sentiment analysis of the set of social
media information" and "determining by a computer a sentiment score based
at least in part on the performed sentiment analysis including the text based
sentiment analysis." Final Act. 8-11 (citing Ouimet ,r,r 30, 34, 52-55, 57;
Holtzman ,r,r 33, 121, 137, 153-154). Specifically, the Examiner finds the
combination of Ouimet and Holtzman teaches or suggests the disputed
limitation:
calculating by a computer the green score based at least in part
upon the determined sentiment score and a predictive model as
applied to the determined sentiment score, and wherein the green
score represents a green sentiment score.
App. Br. 10 (citing Ouimet ,r,r 53-55, 160-162; Holtzman ,r,r 153-155).
Appellants argue: (1) "Ouimet does not calculate a green score, does
not determine a green score, and does not derive a green score" and "is void
of any system or method that teaches, discloses, or suggests 'calculating by a
computer the green score based on social media information' as claimed";
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(2) "nowhere in Holtzman is there any teaching, disclosure, or suggestion of
a green score as claimed"; and (3) the combination of Ouimet and Holtzman
does not teach or suggest the disputed limitation: "calculating by a
computer the green score based at least in part upon the determined
sentiment score and a predictive model as applied to the determined
sentiment score, and wherein the green score represents a green sentiment
score" as recited in claim 1. App. Br. 22-26. Appellants also argue "the
combination is improper because the Examiner impermissibly relies on
hindsight based on information gleaned solely from Appellant's
specification, including the claims in arriving at the proposed combination."
App. Br. 27.
We do not find Appellants' arguments persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellants' arguments
supported by a preponderance of evidence. Ans. 10-12. As such, we adopt
the Examiner's findings and explanations provided therein. Ans. 10-12.
For additional emphasis, we note Appellants' arguments simply attack cited
references individually where the Examiner's rejection is based on a
combination of references. See In re Keller, 642 F.2d 413,425 (CCPA
1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
References must be read, not in isolation, but for what they fairly teach in
combination with the prior art as a whole. Merck, 800 F.2d at 1097. For
example, Ouimet and Holtzman are relied upon by the Examiner to teach or
suggest the disputed limitation: "calculating by a computer the green score
based at least in part upon the determined sentiment score and a predictive
model as applied to the determined sentiment score, and wherein the green
score represents a green sentiment score" as recited in claim 1. App. Br. 10
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(citing Ouimet ,r,r 53-55, 160-162; Holtzman ,r,r 153-155). Likewise,
Appellants' hindsight argument is not persuasive because the Examiner has
provided articulated reasoning with underpinnings for combining Ouimet
and Holtzman. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016)
(Appellant's hindsight argument is of no moment where the Examiner
provides a sufficient, non-hindsight reason to combine the references).
For these reasons, we sustain the Examiner's obviousness rejection of
independent claims 1 and 24, and their respective dependent claims 4, 6, 10,
14--17, 19, 22, 27, 29, 33, 37--40, 42, and 45. For the same reasons, we also
sustain the Examiner's remaining obviousness rejections, which include: (1)
claims 2 and 25 over Ouimet, Holtzman, and Roberts; (2) claims 3, 7, 13,
26, 30, 36 over Ouimet, Holtzman, and Office Notice; (3) claims 5 and 28
over Ouimet, Holtzman, and Beldock; ( 4) claims 8, 9, 31, and 32 over
Ouimet, Holtzman, and Lawrence; (5) claims 11, 12, 34, and 35 over
Ouimet, Holtzman, and Wilson; ( 6) claims 18 and 41 over Ouimet,
Holtzman, and Hoogs; (7) claims 20, 21, 43, and 44 over Ouimet, Holtzman,
and Wennberg; and (8) claims 23 and 46 over Ouimet, Holtzman, Beldock,
and Roberts, which Appellants do not argue separately.
DECISION
The Examiner's rejection of claims 1 and 24 under 35 U.S.C. § 112,
second paragraph as being indefinite, is reversed.
The Examiner's rejection of claims 1--46 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1--46 under 35 U.S.C § 103(a) is
affirmed.
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1--46. See 37 C.F.R. § 4I.50(a)(l).
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
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