Ex Parte Byron et al

Patent Trials and Appeals Board

Mar 22, 2019

14332464 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/332,464 07/16/2014
75916 7590 03/26/2019
IBM AUS IPLAW (GLF)
c/o Garg Law Firm, PLLC
10701 Corporate Dr., Suite 230
Stafford, TX 77477
FIRST NAMED INVENTOR
Donna Karen Byron
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.
AUS920130152US2 1897
EXAMINER
W AESCO, JOSEPH M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
dpandya@garglaw.com
uspto@garglaw.com
garglaw@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONNA KAREN BYRON, SANJA Y FRANCIS KOTTARAM,
LAKSHMINARAY ANAN KRISHNAMURTHY,
and ALEXANDER PIKOVSKY
Appeal2018-000546
Application 14/332,464
Technology Center 3600
Before DENISE M. POTHIER, LARRY J. HUME, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1,2 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-12. Appeal Br. 4. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Throughout this opinion, we refer to the Final Action ("Final Act.") mailed
March 3, 2017, the Appeal Brief ("Appeal Br.") filed July 18, 2017, the
Examiner's Answer ("Ans.") mailed August 31, 2017, and the Reply Brief
("Reply Br.") filed October 18, 2017.
2 Appellants identify the real party in interest as International Business
Machines Corp. Appeal Br. 2.
Appeal2018-000546
Application 14/332,464
Invention
Appellants' invention "relates to a method for augmenting business
process execution using natural language processing." Spec. ,r 1. The
Specification describes modeling a business process and states the process
often leads to steps involving human intervention, such as a person must
perform a task ( e.g., enter information in an interface or decide on
something) before the process can continue. Id. ,r,r 17-19. According to the
disclosure, human intervention can be time consuming and imprecise. Id.
,r 20. The invention aims to solve these problems by determining the
information needed to complete a human task and performing the process
task without human intervention if a confidence level is met. Id. ,r,r 21-23.
This application is a continuation of U.S. Application No. 14/104,493,
which has also been appealed and has been assigned Appeal No. 2018-
000529. See Appeal Br. 3.
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method comprising:
executing a process in a data processing system to reach
a state in the process;
computing, using a processor and a memory, a transition
that has to be performed at the state to leave the state, the
transition advancing the executing of the process and reaching
another state in the process;
extracting, from a process executing in a data processing
system, information related to the state in the process, the
information comprising an execution history of the process up
to the state;
transforming the information into a set of natural
language (NL) questions;
parsing an NL question from the set of NL questions into
a set of major features;
2
Appeal2018-000546
Application 14/332,464
constructing a query from the set of major features;
executing the query on a knowledgebase corresponding
to the process;
generating a set of hypotheses corresponding to a set of
NL answers;
performing a deep analysis and statistical modeling on an
NL answer in the set of NL answers to produce a confidence
rating; and
auto-executing, responsive to the confidence rating
exceeding a threshold level of confidence, the transition in the
process.
Appeal Br. 17 (Claims App'x).
The Examiner relies on the following as evidence of unpatentability
under 35 U.S.C. § 103:
Balko
Woods
US 2009/0164985 Al
US 9,369,488 B2
June 25, 2009
June 14, 2016
David Ferrucci et al., Building Watson: An Overview of the DeepQA Project,
31 AI MAGAZINE 59-79 (Fall 2010) ("Ferrucci").
Michael Yuan, Watson and healthcare 1-13 3 (April 12, 2011),
https ://www.ibm.com/ developerworks/library / os-ind-watson/ ("Yuan") (last
visited May 18, 2017).
The Rejections
Claims 1-5 are provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 13-17 and 20 of U.S.
Application No. 14/104,493. Final Act. 5---6.
Claims 1-12 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written-description requirement. Final Act. 6-8.
3 We will refer to the pages (1-13) provided for this reference consecutively.
3
Appeal2018-000546
Application 14/332,464
Claims 1-12 are rejected under 35 U.S.C. § 101 as being directed to a
judicial exception without significantly more. Final Act. 8-11.
Claims 1-8 are rejected under 35 U.S.C. § 103 as unpatentable over
Yuan, Ferrucci, and Woods. Final Act. 12-19.
Claims 9-12 are rejected under 35 U.S.C. § 103 as unpatentable over
Yuan, Ferrucci, Woods, and Balko. Final Act. 19-21.
THE DOUBLE-PATENTING REJECTION
Appellants request this "rejection be held in abeyance" (Appeal Br. 8),
presenting no argument. We summarily sustain the rejection. See Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that when
appellant fails to contest a ground of rejection, the Board may affirm the
rejection without considering its substantive merits); see also 37 C.F.R.
§ 4I.37(c)(l)(iv); MANUAL OF PATENT EXAMINING PROCEDURE (MPEP)
§ 1205.02 (9th ed., Rev.08.2017 (Jan. 2018)) ("If a ground of rejection
stated by the examiner is not addressed in the appellant's brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it.").
THE WRITTEN-DESCRIPTION REJECTION
Among other limitations, claim 1 recites "performing a deep analysis
and statistical modeling on an NL answer in the set of NL answers to
produce a confidence rating" and "auto-executing, responsive to the
confidence rating exceeding a threshold level of confidence, the transition in
the process." Appeal Br. 17 (Claims App'x). The Examiner asserts these
4
Appeal2018-000546
Application 14/332,464
limitations are not supported by the Specification because the disclosure
does not describe "how the deep analysis and statistical modeling is used to
produce a confidence rating." Final Act. 74 (citing Spec. ,r,r 37-38); Ans.
5-7. Appellants disagree. Appeal Br. 11-13 (citing Spec. ,r,r 37-38).
ISSUE
Has the Examiner erred in determining that claim 1 's "performing a
deep analysis and statistical modeling on an NL answer in the set of NL
answers to produce a confidence rating" and "auto-executing, responsive to
the confidence rating exceeding a threshold level of confidence, the
transition in the process" limitations do not satisfy the written-description
requirement under 35 U.S.C. § 112(a)?
ANALYSIS
Based on the record, we find error. To satisfy the written-description
requirement, a patent specification must describe the claimed invention in
sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. See Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). As
explained below, the Specification describes the disputed limitations in
sufficient detail.
4 The Examiner discusses a limitation "a task to perform the transition" in
claim 1. Final Act. 7. Based on the reference to claim 1 and rest of the
quoted language, we presume the Examiner is referring to "the transition" in
claim 1.
5
Appeal2018-000546
Application 14/332,464
The Specification describes the IBM Watson TM Q and A system as
performing "deep analysis on the language of the input questions ... using a
variety of reasoning algorithms." Spec. ,r 37, cited in both Final Act. 7 and
Appeal Br. 12. The Specification further discusses performing deep analysis
of the process in other embodiments. Spec. ,r,r 98-99. Thus, the
Specification describes the claimed "performing a deep analysis" in
sufficient detail that one skilled in the art would have reasonably concluded
the inventors had possession of the claimed invention in claim 1.
The Specification further discusses the deep analysis generating a
score (Spec. ,r 37) that is "weighted against a statistical model" (Spec. ,r 38).
The Specification states the statistical model is "used to summarize a level
of confidence that the IBM Watson TM Q and A system has regarding the
evidence that the potential response, i.e., candidate answer, is inferred by the
question" and "identifies candidate answers that surface as being
significantly stronger than others." Spec. ,r 38, cited in both Final Act. 7 and
Appeal Br. 12. The Specification also discusses determining "a confidence
level of an NL answer generated in block 514." Spec. ,r 90, Fig. 5. These
collective discussions describe claim 1 's "performing ... statistical
modeling on an NL answer in the set of NL answers to produce a confidence
rating" in sufficient detail that one skilled in the art would have reasonably
concluded the inventors had possession of the claimed invention in claim 1.
As for "auto-executing, responsive to the confidence rating exceeding
a threshold level of confidence, the transition in the process" in claim 1, the
Specification states an "application determines whether the confidence level
exceeds a threshold level of confidence" and when the "Yes" path is
followed, "the application auto-executes a node of the business process
6
Appeal2018-000546
Application 14/332,464
using the one or more NL answers" at steps 516 and 518 respectively. Spec.
,r 91, Fig. 5. As such, the Specification describes claim 1 's "auto-executing,
responsive to the confidence rating exceeding a threshold level of
confidence, the transition in the process" recitation in sufficient detail that an
ordinary skilled artisan would have reasonably concluded the inventors had
possession of the above recited limitation.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of independent claim 1 and dependent claims 2-12 for similar
reasons. 5
THE PATENT-ELIGIBILITY REJECTION
PRINCIPLES OF LAW
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[L Jaws of nature, natural phenomena, and abstract
5 The Examiner's concerns over "how the deep analysis and statistical
modeling is used to produce a confidence rating" (Final Act. 7 ( emphasis
added)) relate more to the enablement requirement under 35 U.S.C. § 112(a),
which requires that the Specification teach those in the art to make and use
the invention without undue experimentation. See MPEP § 2164. Also, we
leave to the Examiner to decide whether the recited "deep analysis" is
definite under 35 U.S.C. § 112(b ). See, e.g., MPEP § 2173.02---04
( discussing when the boundaries of the protected subject matter are not
clearly delineated and the scope is unclear} Notably, the Specification
states deep analysis uses "a variety of reasoning algorithms. There may be
hundreds or even thousands of reasoning algorithms applied, each of which
performs different analysis .... " Spec. ,r 37 (emphasis added).
7
Appeal2018-000546
Application 14/332,464
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("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."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diamond v. Diehr, 450 U.S. 175, 193
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
8
Appeal2018-000546
Application 14/332,464
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). That
said, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
In January 2019, the USPTO published revised guidance on the
application of§ 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that
guidance, we first look to whether the claim recites:
9
Appeal2018-000546
Application 14/332,464
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes) (Guidance, 84 Fed. Reg. at 52-54) ("Revised Step 2A -
Prong 1 "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a}-(c), (e}-(h))
(Guidance, 84 Fed. Reg. at 53-55) ("Revised Step 2A - Prong 2").
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56 ("Step 2B").
ANALYSIS
Claims 1-12 are argued as group. Appeal Br. 8-11. We select
claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
At the outset, we note that claim 1 recites a series of steps (Appeal
Br. 17 (Claims App'x)) and, therefore, falls within the process category of
§ 101. Even so, we must still determine whether claim 1 is directed to a
judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217. To
this end, we must determine whether (1) claim 1 recites a judicial exception
10
Appeal2018-000546
Application 14/332,464
and (2) fails to integrate the exception into a practical application. See
Guidance, 84 Fed. Reg. at 52-55. If both elements are satisfied, the claims
are directed to a judicial exception under the first step of the Alice/Mayo test.
See id.
Alice Step One, Revised Step 2A - Prong 1
Appellants argue claim 1 is not abstract. Appeal Br. 8-10. We are
not persuaded.
To determine whether a claim recites a judicial exception, we
( 1) identify the claim's specific limitations that recite an abstract idea, and
(2) determine whether the identified limitations fall within certain subject-
matter groupings, namely (a) mathematical concepts 6; (b) certain methods of
organizing human activity 7; or ( c) mental processes. 8 In the rejection, the
Examiner determines that claim 1 is directed to "an abstract idea," which
includes executing a process, computing a transition, extracting information,
parsing information, constructing and executing a query, generating a
hypothesis, performing deep analysis and statistical modeling to determine a
confidence rating, determining whether a confidence rating exceeds a
6 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance,
84 Fed. Reg. at 52.
7 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See id.
8 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See id.
11
Appeal2018-000546
Application 14/332,464
threshold, and auto-executing a process transition responsive to the rating.
Final Act. 8-9; Ans. 4. Upon reviewing the record, we agree with the
Examiner that claim 1 recites at least one judicial exception. As explained
below, the recited judicial exception can be categorized as mental processes.
Appeal Br. 17 (Claims App'x).
Claim 1 recites the following steps: (1) "computing . . . a transition
that has to be performed at a state to leave the state, the transition advancing
the executing of the process and reaching another state in the process,"
(2) "extracting ... information related to the process state, the information
comprising an execution history of the process up to the state,"
(3) "transforming the information into a set of natural language (NL)
questions," ( 4) "parsing an NL question from the set of NL questions into a
set of major features," (5) "constructing a query from the set of major
features," (6) "executing the query ... corresponding to the process,"
(7) "generating a set of hypotheses corresponding to a set of NL answers,"
and (8) "performing a deep analysis and statistical modeling on an NL
answer in the set of NL answers to produce a confidence rating." Id.
The above steps as a whole and under the broadest reasonable
construction recite modeling a process to transition from one state to another
state using a confidence rating because all the above limitations recite
features that would ordinarily take place when modeling a transition in a
process. See id. In the context of the Specification, such a process involves
modeling a business process (e.g., processing purchase orders) that
transitions from one state ( e.g., beginning the "credit approval" step) to
another state in the business process ( e.g., sending credit application to the
appropriate third-party for approval) based on a confidence rating ( e.g., set
12
Appeal2018-000546
Application 14/332,464
at 0.8). See Spec. ,r,r 21-22, 70-79, Fig. 3. As an example, determining or
"computing . . . a transition that has to be performed at the state to leave the
state" as recited in limitation (1) is an activity that would take whenever one
models a process transitioning from one state to another state ( e.g., from the
beginning of a "credit approval" step to sending a credit application for
approval). Similarly, "extracting ... information related to the process
state" (e.g., buyer's account number and purchase transaction amount),
"transforming the information into" an NL question set (e.g., what to do with
a buyer's requested purchase amount and who to send the request to),
"parsing an NL question from the" NL question set into major features ( e.g.,
"purchase amount" and "approval person"), "constructing a query from the"
major features ( e.g., how to obtain approval for requested purchase amount
from certified approvers), "executing the query ... corresponding to the
process" ( e.g., research possible ways to get credit approval), "generating a
set of hypotheses corresponding to" an NL answer set ( e.g., generating a list
of possible credit approvers to send the credit request), "performing a deep
analysis and statistical modeling on an NL answer in the" NL answer set "to
produce a confidence rating" (e.g., compare each approver on generated list
to various sources, such as a certification list, a company list, and an
association list, to determine matches and assign each match a rating
depending on the approver's certification) as recited in limitations (2}-(8)
are characteristics of modeling a process transition from one state to another.
Modeling a process transitioning from one state to another state as recited in
limitations ( 1 }-(8) involves evaluation, conceptualization, and judgment,
which are mental processes.
13
Appeal2018-000546
Application 14/332,464
Thus, with the exception of generic computer-implemented steps,
there is nothing in claim 1 that forecloses it from being performed by a
human either mentally or with pen and paper. See Intellectual Ventures I
LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (citing
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011)); see also Benson, 409 U.S. at 67 (indicating "mental processes ...
are not patentable, as they are the basics tools of scientific and technological
work"); see also U. of Fla. Res. Found., Inc. v. Gen. Elec. Co., 2019 WL
921859, at *4 (Fed. Cir. Feb. 26, 2019) (indicating claims directed to
automating a methodology that was previously done manually are directed
to abstract ideas). These findings are further supported by the Specification,
which seeks to automate human tasks that are time-consuming and
imprecise. See Spec. ,r,r 18-23. Moreover, limitations (3), (4), (6), and (7)
do not involve any machine.
Although some of claim 1 's limitations may be based on mathematical
concepts ( e.g., "statistical modeling"), mathematical formulas or calculations
are not explicitly recited in the claim. Moreover, the Specification states
"deep analysis" is performed "using a variety of reasoning algorithms."
Spec. ,r 37. The Specification further states "[t]here may be hundreds or
even thousands of reasoning algorithms applied, each of which performs
different analysis, e.g., comparisons" and include "matching of terms and
synonyms within the language of the input question and found portions of
the corpus of data" or "evaluat[ing] the source of the portion of the corpus of
data and ... its veracity." Id. Construing the phrase "deep analysis" in light
of the Specification, we determine the phrase covers many algorithms,
including some that are sufficiently simple such that they can be practically
14
Appeal2018-000546
Application 14/332,464
performed in the human mind or with pen and paper ( e.g., matching terms
and synonyms with a data corpus or evaluating part of a source and its
veracity). See id. Thus, although some "deep analysis" may not practically
be performed in the human mind, other embodiments covered by claim 1 's
scope can.
Appellants also contend claim 1 is directed to "NLP and Q and A
technologies, which satisfy an 'article of manufacture' or 'machine'
requirement for patentability." Appeal Br. 10. We disagree. First, although
reciting NL features, claim 1 does not recite a "NLP" or "Q and A" machine.
Appeal Br. 17 (Claims App'x). Second, as discussed above, claim 1 is
directed to a process. Third, as discussed in more detail below under
Revised Step 2A - Prong 2, the limitations to machines are additional
elements separate from the identified judicial exception.
Accordingly, we determine claim 1 as a whole recites evaluating,
conceptualizing, and judging that can be performed in the human mind or
with pen and paper, which are mental processes identified in the Guidance,
and thus an abstract idea.
Alice Step One, Revised Step 2A - Prong 2
Although claim 1 recites an abstract idea, we must still determine
whether the abstract idea is integrated into a practical application, namely
whether the claim applies, relies on, or uses the abstract idea in a manner
that imposes a meaningful limit on the abstract idea, such that the claim is
more than a drafting effort designed to monopolize the abstract idea. See
Guidance, 84 Fed. Reg. at 53. To this end, we (1) identify whether there are
any additional, recited elements beyond the judicial exception, and
(2) evaluate those elements individually and collectively to determine
15
Appeal2018-000546
Application 14/332,464
whether they integrate the exception into a practical application. See id. at
54--55.
Appellants contend the claimed invention "improve[ s] the efficacy of
the computer and implement[ s] the claimed functions that perform a specific
method to solve a problem using said NLP and Q and A technologies."
Appeal Br. 10. We are not persuaded.
The additionally recited elements beyond the above-identified judicial
exception in claim 1 are "a data processing system," "a processor," "a
memory," and "a knowledgebase [sic]." Appeal Br. 17 (Claims App'x); see
also Final Act. 10. Claim 1 also recites "executing a process in a data
processing system to reach a state in the process," "executing the query on a
knowledgebase [sic]," and "auto-executing, responsive to the confidence
rating exceeding a threshold level of confidence, the transition in the
process." Id. When considering these elements individually or in
combination, we determine they do not integrate a judicial exception into a
practical application for the below-stated reasons.
First, the additional elements do not reflect an improvement in a
computer's functioning or an improvement to other technology or technical
field as set forth in MPEP § 2106.05(a) and Guidance, 84 Fed. Reg. at 55.
See Final Act. 10-11 (citing Spec. ,r,r 31-33). Instead, the claimed data
processing system, processor, memory, and knowledge base merely
automate a manual process using generic computer elements as tools to
perform the judicial exception. These elements do not constitute a
patentable improvement in computer technology. See Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017); see also
Alice, 573 U.S. at 221,223. For example, the claimed data processing
16
Appeal2018-000546
Application 14/332,464
system is a tool to execute part of the recited method (e.g., "executing a
process ... to reach a state in the process," and possibly "auto-executing ...
the transition in the process" 9). Appeal Br. 17 (Claims App'x). Similarly,
the processor and memory are tools used to "comput[ e] ... a transition that
has to be performed at the state to leave the state, the transition advancing
the executing of the process and reaching another state in the process." Id.
Further, the "knowledge" base may include a computer tool that a query uses
to generate potential answers. Id.; see also Spec. ,r,r 39, 60-62. Thus, the
above-recited steps are being applied using general computer elements and
do not improve a computer's function. See Alice, 573 U.S. at 221; see also
MPEP § 2106.05(±).
Second, Appellants argue that the claimed invention implements its
functions that perform a specific method to solve a problem using NLP and
Q and A technologies. Appeal Br. 1 O; Reply Br. 3. Claim 1 recites steps
involving natural language, such as transforming information into NL
questions, parsing the NL questions into major features, generating
hypotheses corresponding to NL answers, and performing statistical
modeling on the NL answers, which may involve "NLP technologies," and
(2) performing "deep analysis" on an NL answer, which may include Q&A
technologies as discussed previously when discussing the written description
rejection. Appeal Br. 17 (Claims App'x). However, such steps do not
necessarily use the data processing system, the processor, and the memory to
perform the steps and, as broadly as recited, can be performed by a human.
Claim 1 therefore is not limited to NLP and Q and A technologies. But even
9 Although claim 1 does not recite what element performs this "auto-
executing" step, the data processing system is one possible element.
17
Appeal2018-000546
Application 14/332,464
assuming claim 1 implements such technologies, simply applying a judicial
exception to a particular field (e.g., NLP and/or Q&A technologies) is not
sufficient to integrate the exception into a practical application. See Bilski,
561 U.S. at 612; see also MPEP § 2106.05(h).
Appellants also attempt to draw an analogy between claim 1 and DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Appeal
Br. 10-11. Appellants contend certain machine interactions with humans
"were not unavailable prior to the advent of NL-enabled systems" (Appeal
Br. 10) and thus "DDR applies" (id. at 10-11). We are not persuaded. In
DDR, the claimed invention was necessarily rooted in computer technology
to overcome a problem specifically arising in the realm of computer
networks, namely retaining website visitors by sending a hybrid web page
that presents product information from a third-party and the visual "look and
feel" elements from the host website. See DDR, 773 F.3d at 1257-59. In
contrast and as previously noted, Appellants have not demonstrated
sufficiently that claim 1 is necessarily rooted in computer technology to
overcome a problem specifically arising in computer technologies. See also
Ans. 5.
Third, as for Appellants' assertions that the claimed method improves
on the computer's efficacy (Appeal Br. 10), several court decisions indicate
"merely adding computer functionality to increase the speed or efficiency of
the process does not confer patent eligibility on an otherwise abstract idea."
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015); see also Credit Acceptance, 859 F.3d at 1057
(quoting Capital One Bank, 792 F.3d at 1370).
18
Appeal2018-000546
Application 14/332,464
Claim 1 also recites the additional steps of "executing a process in a
data processing system to reach a state in the process," "executing the query
on a knowledgebase [sic]," and "auto-executing, responsive to the
confidence rating exceeding a threshold level of confidence, the transition in
the process." Appeal Br. 17 (Claims App'x). Similar to the Examiner (see
Ans. 5), we determine these additional executing steps do not apply the
judicial exception in a meaningful way, such that claim 1 is more than
drafting effort designed to monopolize a judicial exception. See MPEP
§§ 2106.05(e). These limitations also are no more than insignificant extra-
solution activities as set forth in MPEP § 2106.05(g). For example, the
"executing a process" step is merely a nominal extra-solution step for use in
computing a transition in the process and extracting information as recited in
claim 1. The "executing the query on a knowledge base [sic]" is a tangential
extra-solution step because, as recited, this step is not used by the latter
"generating," "performing," and "auto-executing" steps in claim 1. Appeal
Br. 17 (Claims App'x). Furthermore, the "auto-executing" step is merely an
insignificant extra-solution step that uses the confidence rating to determine
whether to execute the process transition as claim 1 recites. All these steps
are not enough to transform the judicial exception into a patentable process
(see Parker, 427 U.S. at 590) and do not impose meaningful limits on claim
I (see Final Act. 1 O; see also Ans. 5).
Finally, claim 1 's additional elements do not implement the identified
judicial exception with or use the judicial exception in conjunction with a
particular machine as set forth in MPEP § 2106.05(b) or recite a particular
transformation as set forth in MPEP § 2106.05( c ). For example, the claimed
data processing system, processor, and memory are not recited as a
19
Appeal2018-000546
Application 14/332,464
particular type of data processing system, processor, or memory. Appeal Br.
17 (Claims App 'x). Merely manipulating or reorganizing data, like some of
claim 1 's steps, is also not enough to satisfy the transformation test. See
CyberSource, 654 F3.d at 1375. No new or different function has been
created using the additional elements in claim 1, such that an article has been
transformed physically into a different state or thing.
For the above-stated reasons, we determine the additional elements
beyond the judicial exception in claim 1, whether considered alone or in
combination, are not integrated into a practical application.
Alice/Mayo Step Two, Step 2B
Because we determine claim 1 does not integrate the recited judicial
exception into a practical application, we consider whether the additional
elements add a specific limitation or combination of limitations that are not
well-understood, routine, or conventional activity in the field. Guidance, 84
Fed. Reg. at 56. If so, this indicates that an inventive concept may be
present. If, instead, the additional elements simply append well-understood,
routine, and conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exceptions, this
indicates that an inventive concept may not be present.
The Examiner found that the additional elements ( e.g., the data
processing system, the processor, and the memory) in claim 1 perform
generic computer functions that are well-understood, routine, and
conventional activities. Final Act. 10-11 ( citing Spec. ,r,r 31-33); Ans. 5.
We agree with the Examiner's finding in this regard and further note these
elements are recited at a high level of generality. See Spec. ,r,r 31-33, cited
in Final Act. 10. Also, to the extent claimed, the Specification further
20
Appeal2018-000546
Application 14/332,464
describes an NLP engine and a Q and A engine as "an existing tool" and "an
existing application" respectively, and thus they perform their conventional
and routine activities. Spec. ,r 33.
Concerning the "executing" and the "computing" steps in claim 1,
Appellants assert "there is no established or well-known universally binding
correspondence between execution of a process and transmission." Appeal
Br. 9. Appellants further argue "'computing a transition' is a transmission
step." Id. As understood, Appellants contend the Examiner has not
demonstrated a well-known correspondence between the "executing" and
the "computing" steps in claim 1. See id.
We are not persuaded. First, we disagree that the "computing ... a
transition" step is a transmission step as argued (Appeal Br. 9) but rather is a
step that determines a transition. Second, we previously indicated that we
need to consider whether the additional elements in claim 1 add a specific
limitation or combination of limitations that are not well-understood,
routine, or conventional activity in the field. Thus, even assuming without
agreeing the above step concerns transmission, this "computing" step is part
of the judicial exception (excluding the processor and memory) and thus as
stated above, does not constitute an additional element in claim 1. Third,
concerning the "executing" step, Appellants do not dispute this step is well-
understood, routine, or conventional in the field. Appeal Br. 9. Rather,
Appellants assert there is no well-known universally binding correspondence
between execution of the process and transmission steps. See id. Such an
argument is unavailing to challenge that the additional steps themselves or in
combination are not well-known, routine, or conventional and add
21
Appeal2018-000546
Application 14/332,464
something significant beyond the judicial exception. See Mayo, 566 U.S. at
79-80 (citing Parker, 427 U.S. at 590).
Appellants further list other limitations in claim 1 but do not assert
that these steps are not well-understood, routine, or conventional. Appeal
Br. 9.
We conclude the additional elements in claim 1 alone or in
combination simply append well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. As such, we determine the additional
elements do not provide an inventive concept in claim 1.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-12, which are not
separately argued.
OBVIOUSNESS REJECTION OVER YUAN, FERRUCCI,
AND WOODS
The Examiner finds Yuan teaches many of the limitations in claim 1.
Final Act. 12-14. The Examiner turns to Ferrucci in combination with Yuan
to teach the limitations related to the "threshold level." Final Act. 14--15
(citing Ferrucci 64). The Examiner also turns to Woods in combination with
Yuan and Ferrucci to teach or suggest the recitations concerning information
related to "a state in the business 10 process," "information comprising an
execution history of the process up to the state," and "a transition from the
10 Notably, claim 1 does not recite "business." Appeal Br. 17 (Claims
App'x).
22
Appeal2018-000546
Application 14/332,464
state defined in the business process." Final Act. 15 (citing Woods 8:60-65,
9:65-10:6, 10:35--40).
Among other arguments, Appellants assert the proposed combination
does not teach transforming the information into a set of natural language
questions. Appeal Br. 14--15; Reply Br. 5.
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 1 by
determining that Yuan, Ferrucci, and Woods as proposed would have taught
or suggested "transforming the information [ related to the state in the
process, the information comprising an execution history of the process up
to the state] into a set of natural language (NL) questions"?
ANALYSIS
Based on the record, we find error. We agree with Appellants that the
Examiner relies on Yuan to teach the disputed "transforming" limitation.
Appeal Br. 15 (stating "[o]nly Yuan has been relied upon for these features
in claim 1 "). Although the rejection further discusses Woods when
addressing the information and its content (Final Act. 15), we presume the
Examiner relies on Yuan alone to teach transforming this information into a
NL question set. Final Act. 13 (citing Yuan 4--5); Ans. 7-8 (same). We thus
confine our discussion to Yuan.
Yuan teaches a user can ask a question to a Q&A system, such as why
a heartburn medicine did not work. Yuan 4, cited and discussed in Final
Act. 13. However, Yuan does not teach or suggest entering information into
the Q&A system that transforms into a question but rather receiving a NL
23
Appeal2018-000546
Application 14/332,464
question directly. Yuan 4. We thus agree with Appellants that this example
in Yuan does not take information and transform that information into NL
questions as recited. See Appeal Br. 15.
Yuan further discusses Watson parses an NL question to generate a
search query, searches a search engine for related documents, parses the NL-
based search results, and generates potential answers or hypotheses. Yuan
4--5. The Examiner states the "hypothesis is a conjecture or question." Ans.
8. But, as noted by Appellants (Reply Br. 5), Yuan's hypotheses are
answers. Yuan 5 (stating "potential answers (hypotheses)"). As such,
Yuan's parsing of an NL question and generating potential answers cannot
reasonably be construed as teaching "transforming the information into a set
of natural language (NL) questions" as recited in claim 1.
Yuan also teaches parsing the hypotheses/answers, generating a
search query, parsing evidence/search results, and scoring the evidence.
Yuan 5. The Examiner has not explained sufficiently how these additional
steps teach or suggest "transforming the information into a set of natural
language [] questions" as recited in claim 1. We thus are constrained to
conclude the proposed combination does not teach the above limitation.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of independent claim 1 and dependent claims 2-8 for similar
reasons.
THE OBVIOUSNESS REJECTION OVER YUAN, FERRUCCI,
WOODS, AND BALKO
Appellants contend Balko does not overcome the distinctions
addressed for claim 1. Appeal Br. 15. We agree. The Examiner does not
24
Appeal2018-000546
Application 14/332,464
further rely on Balko to teach the above-noted disputed limitation. Final
Act. 19-21. Accordingly, Appellants have persuaded us of error in the
rejection of claims 9-12 for reasons previously stated.
DECISION
We affirm the provisional rejection of claims 1-5 on nonstatutory
double-patenting rejection grounds.
We affirm the Examiner's rejection of claims 1-12 under§ 101.
We reverse the Examiner's rejections of claims 1-12 under§§ 112(a)
and 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. 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
25