Ex Parte Bahadori et al

Patent Trial and Appeal Board

Mar 30, 2018

11544300 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111544,300
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
10/06/2006
04/03/2018
FIRST NAMED INVENTOR
Hamid Bahadori
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.
RSW920105103US1 7021
EXAMINER
WOOLCOCK, MADHU
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAMID BAHADORI and HEMANTH PUTTASWAMY1
Appeal2016-000016
Application 11/544,300
Technology Center 2400
Before JOHN C. KERINS, ANNETTE R. REIMERS, and
JILL D. HILL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
Hamid Bahadori and Hemanth Puttaswamy (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-23 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
We AFFIRM.
1 In the Appeal Brief, International Business Machines Corporation is
identified as the real party in interest. Appeal Brief 1 (hereinafter "App. Br.")
(filed June 26, 2015).
2 The subject application was previously before the Patent Trial and Appeal
Board in Appeal No. 2011-013176. See Decision dated Dec. 31, 2014. In that
Decision, the adverse decision of the Examiner was REVERSED.
Appeal 2016-000016
Application 11/544,300
CLAIMED SUBJECT MATTER
The claimed subject matter relates to tracking based on user session
data. See Spec. i-fi-18, 18. Claims 1, 4, 10, 11, and 23 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method for tracking web usage data, comprising:
assigning a session ID to a new user session, the user session
tracking web usage data of a user on a web server;
including said session ID with monitored action data sent by the
user to an analytics server system, wherein said analytics server system is
independent of said web server;
grouping, with said analytics server system, said monitored action
data with identical session IDs into session groups prior to storage in a
relational database; and
inserting, with said analytics server system, at least one segmentation
ID into each session of said session groups, each of said at least one
segmentation ID defining a property of interest to a client, wherein said
segmentation ID is used to filter said session groups into sess10n groups
that exhibit the property of interest.
ANALYSIS
Patent-Ineligible Subject Matter
Claims 1-23
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner applies the
two-step framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1296-97 (2012) and reiterated in Alice
Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014),
which considers, in the first step, whether the claims are "directed to" a
patent-ineligible concept, e.g., an abstract idea, and then, in a second step,
whether the claims, individually and as an ordered combination, recite an
inventive concept-an element or combination of elements sufficient to
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Application 11/544,300
ensure the claims amount to "significantly more" than the abstract idea and
transform the nature of the claims into a patent-eligible concept.
Pursuant to the first step of the analysis, the Examiner determines the
claims are directed to the abstract idea of "determining a property of interest
by tracking web usage data," which entails nothing more than "sorting or
analyzing the data" based on the properties of the data. Non-Final Act. 23;
Ans. 3. 4 The Examiner further determines that the claim scope is similar to
the concept of "comparing new and stored information and using rules to
identify options" identified as an abstract idea in SmartGene, Inc. v.
Advanced Biological Labs., SA 555 F. Appx. 950, 955 (Fed Cir. 2014).
Non-Final Act. 2.
Indeed, our reviewing courts have held claims ineligible under § 101
when directed to data tracking/gathering and data analysis. See Electric
Power Group v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)
(quoting SmartGene, Inc., in which "analyzing information" was found to be
an abstract idea). 5 Similarly to claim 1, the claims in SmartGene, Inc. and
3 Non-Final Office Action (hereinafter "Non-Final Act.") (mailed Apr. 24,
2015).
4 Examiner's Answer (hereinafter "Ans.") (mailed Aug. 19, 2015).
5 As Appellants' recognize in their Reply Brief, the Examiner does not rely
on SmartGene, Inc. as it relates to mental processes confined to the medical
field, i.e., steps doctors go through in their minds or do regularly, but as
persuasive authority to the extent it involves the generic concept of data
analysis being held to be an abstract idea. See Reply Br. 4 (hereinafter "Reply
Br.) (filed Sept. 23, 2015) ("The Examiner now appears to acknowledge that
claims 1-23 could not be accomplished in the human mind."); see also Ans.
3--4 ("[T]he fact that it is a doctor performing the claimed abstract idea was
not set forth as part of the claim determined to be the abstract idea" and "the
rejection of the claims is silent regarding any indication that the claims are
rejected because they can be accomplished in the human mind.").
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Application 11/544,300
Electric Power Group are directed to data analysis. The claims in Electric
Power Group are even more like claim 1, in that they are both directed to
gathering and analyzing information and then presenting results, without any
particular asserted inventive technology for performing those functions. See
Ans. 3; Electric Power Group at 1354.
Although Appellants argue that the claims are not directed to
comparing stored and input data and rules, i.e., data analysis, Appellants do
not provide sufficient explanation as to why the claims are not directed to
the abstract idea set forth by the Examiner. Rather, Appellants' arguments
merely restate and summarize claim limitations and provide excerpts from
the Specification. Reply Br. 3; see also App. Br. 1-6 ("section III") and 8-
27. Moreover, Appellants acknowledge claim 1 is "at most addressing a
business challenge, such as improving the speeds of processing, analyzing,
and presentation of tracking orders." App. Br. 27. However, as the
Examiner correctly points out, the features for improving the speeds of
processing, analyzing, and presentation "are not claimed" and "do not limit
the scope of the claim language." Ans. 3; See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (Limitations not appearing in the claims cannot be relied
upon for patentability).
Because claim 1 involves merely the concept of tracking and
analyzing information, which the case law precedent cited above
characterizes as being directed to an abstract idea, we agree with the
Examiner's determination that claim 1 is directed to an abstract idea. Non-
Final Act. 2.
We now address the second step of the Alice framework. Under the
second step, the Examiner determines the claims do not recite additional
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Application 11/544,300
limitations amounting to significantly more than the claimed abstract idea,
because the additional limitations only involve routine and conventional
activity. Non-Final Act. 3. Specifically, the Examiner finds that "tracking
web usage data represents insignificant data-gathering steps" and that "taken
as a whole, the claims simply instruct the practitioner to implement the
abstract idea with routine, conventional activity." Id.
Appellants argue claim 1 amounts to significantly more than an
abstract idea because it is directed to speeding up the processing, analyzing
and presentation of tracking order data to overcome a business challenge and
is an improvement to another technology or technical field. App. Br. 48--49;
Reply Br. 4--5.
Appellants' argument is not persuasive. As discussed above, the
features for improving the speeds of processing, analyzing, and presentation
are not claimed. Ans. 3; See In re Self, 671 F.2d at 1348.
Although Appellants refer to paragraphs 2-8 of the Specification,
they do not identify any specific claimed features recited therein that result
in improvements to another technology or technical field or are beyond well-
understood, routine, conventional activity. App. Br. 48--49; Reply Br. 4--5.
We note the Federal Circuit has routinely held that using a computer
to perform tasks more quickly or more accurately is not sufficient to render a
claim eligible. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015). Appellants have not explained how the claimed
invention improves speeds of processing, analyzing, and presentation via an
improvement to the computer implementation beyond what is routine and
conventional, as opposed to merely an improvement to the business process.
As such, we fail to see how the claimed invention is something other than
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Application 11/544,300
the generic computer implementation of an improved business practice,
which is insufficient for patent-eligibility. See DDR Holdings, LLC v.
Hotels.com et al., 773, F.3d 1245, 1256 (Fed. Cir. 2014).
Accordingly, claim 1, when its limitations are considered both
individually and as an ordered combination, amounts to nothing more than
an attempt to patent the abstract idea embodied in the steps of the claim.
Thus, the additional limitations of claim 1 fail to transform the nature of the
claim into patent-eligible subject matter. See id.
For the above reasons, Appellants fail to apprise us of error in the
Examiner's determination that claim 1 is directed to patent-ineligible subject
matter. Independent claims 4, 10, 11, and 23 recite similar limitations as
claim 1, and Appellants argue they are allowable for the same reasons as
argued for claim 1. See App. Br. 6-7, 27-28, and 48--49. Appellants do not
present arguments for dependent claims 2, 3, 5-9, and 12-22 separate from
those presented for the independent claims. See App. Br. 6--49.
Accordingly, we sustain the Examiner's rejection of claims 1-23 as being
directed to patent-ineligible subject matter.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-23 as
being directed to patent-ineligible subject matter.
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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