Ex Parte Cummins

Patent Trial and Appeal Board

Mar 27, 2017

11384593 (P.T.A.B. Mar. 27, 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.
11/384,593 03/20/2006 Fred A. Cummins 82256393 9759
56436 7590 03/29/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
SITTNER, MATTHEW T
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRED A. CUMMINS
Appeal 2014-008861
Application 11/384,5931
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
MEREDITH C. PETRA VICK, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Fred A. Cummins (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 20, 21, and 26-43. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellant identifies Hewlett-Packard Development Company, LP as
the real party in interest. App. Br. 4.
Appeal 2014-008861
Application 11/384,593
THE INVENTION
Claim 20, reproduced below, is illustrative of the subject matter on
appeal.
20. A computer program product in a non-transitory computer
readable media for use in a data processing system for modeling
human motivation within an enterprise, the computer program
product comprising:
first instructions for structurally monitoring, measuring,
and quantifying a level of motivation induced by at least
one personal incentive applied towards achievement of a
goal in at least a plurality of individuals within the
enterprise;
second instructions for structurally monitoring,
measuring, and quantifying a level of motivation induced
by community values applied towards achievement of a
goal in at least a plurality of individuals within the
enterprise;
third instructions for structurally monitoring, measuring,
and quantifying a level of motivation induced by
dependence on supporting goals applied towards
achievement of a goal in at least a plurality of individuals
within the enterprise;
fourth instructions for structurally monitoring,
measuring, and quantifying a level of motivation induced
by at least one relationship incentive applied towards
achievement of a goal in at least a plurality of individuals
within the enterprise; and
fifth instructions for modifying the application of said at
least one personal incentive, said at least one relationship
incentive, said dependence on supporting goals, and said
community values in response to the levels of motivation
determined from said structurally monitoring, measuring,
and quantifying steps.
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Application 11/384,593
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Berkson US 6,049,779 Apr. 11,2000
Nakagawa US 6,155,924 Dec. 5, 2000
Sheprow US 2002/0038251 A1 Mar. 28, 2002
Szynalski US 2002/0116272 A1 Aug. 22, 2002
Morrison US 2003/0009367 A1 Jan. 9, 2003
Roller US 2003/0204424 A1 Oct. 30, 2003
Bangel US 2006/0184409 A1 Aug. 17, 2006
Cooper US 2006/0233349 A1 Oct. 19, 2006
The following rejections are before us for review:
1. Claims 20, 21, and 26-43 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 20, 21, and 26-43 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Roller and Berkson.
3. Claims 27 and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roller, Berkson, and Nakagawa.
4. Claims 27 and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roller, Berkson, and Cooper.
5. Claims 27 and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roller, Berkson, and Bangel.
6. Claims 28 and 37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roller, Berkson, and Sheprow.
7. Claims 28 and 37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roller, Berkson, and Morrison.
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Application 11/384,593
8. Claims 28 and 37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koller, Berkson, and Szynalski.
ISSUES
Did the Examiner err in rejecting claims 20, 21, and 26-43 are
rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement?
Did the Examiner err in rejecting claims 20, 21, and 26-43 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Koller and
Berkson?
Did the Examiner err in rejecting claims 27 and 36 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Koller, Berkson, and
Nakagawa, Cooper, or Bangel?
Did the Examiner err in rejecting claims 28 and 37 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Koller, Berkson, and
Sheprow, Morrison, or Szynalski?
ANALYSIS
The rejection of claims 20, 21, and 26—43 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Regarding claims 20 and 21, the Examiner states that the originally-
filed Specification provides “no written description” for the claim limitation
“quantifying a level of motivation induced by at least one personal
incentive applied towards achievement of a goal in at least a plurality of
individuals within the enterprise...'1'’ Final Act. 3. The Examiner points out
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Application 11/384,593
that “Applicant discloses levels of reward/success [0063], level of influence
[0085], level of achievement [0102]” and that subjective values of these are
used to analyze motivation. (Final Act. 3). “However, at [0096], these values
are not tied [to] a personal incentive applied towards achievement of a goal
as presently claimed in the amendment.” Final Act. 4.
The Appellant disagrees, arguing that
Figure 5 shows that the values of motivation are assigned with
respect to a goal where the goals are row-wise defined, incentives
are column-wise defined, and motivation values corresponding
to a goal and incentive are provided at the intersection of each
goal and incentive thereby indicating a quantified level of
motivation induced by the incentive towards achievement of the
goal. As disclosed in the specification: "[e]ach motivation, the
intersection of a goal row 508, 510, and 512 and an incentive
column (columns beneath personal incentives 516 and
relationship incentives 518), indicates the relevance of the
incentive and the influence it has on the goal.”
App. Br. 12 (citing to Spec. 28:16—21).
Compliance with the written description requirement is a question of
fact. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.
Cir. 1985). We have reviewed the Specification and find that a
preponderance of the evidence weighs in favor of the Appellant’s position.
In disclosing “[e]ach motivation, the intersection of a goal row 508, 510, and
512 and an incentive column (columns beneath personal incentives 516 and
relationship incentives 518), indicates the relevance of the incentive and the
influence it has on the goal” (Spec. 28:16—21), the Specification provides
adequate written descriptive support for “quantifying a level of motivation
induced by at least one personal incentive applied towards achievement of a
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Application 11/384,593
goal in at least a plurality of individuals within the enterprise ...” (claims 20
and 21).
The Examiner also states that “the amended features of ‘quantifying a
level of motivation induced by at least one personal incentive applied
towards achievement of a goal in at least a plurality of individuals within
the enterprise is fundamentally different from that disclosed at [0063;
0085; 0093; 0096; 0102].” Final Act. 4. How it is fundamentally different
is not explained. However, as the Appellant points out, “[t]he Examiner
admitted that the specification teaches that motivations are given values”
(App. Br. 12; see Final Act. 4 (“Applicant provides an example where
motivations are given values from 1 to 5 [0096].”). Accordingly, it appears
the Examiner concedes the Specification does indeed provide adequate
written descriptive support for “quantifying a level of motivation” as
claimed.
The Examiner states that the originally-filed Specification “provides
no written description” for various claim limitations in claims 26—29, 33,
and 34. Nothing more is said. Given nothing more than conclusory
statements, we find a prima facie case of a lack of adequate written
descriptive support pursuant to the requirement of, now, § 112(a) has not
been made out in the first instance by a preponderance of the evidence.
The rejection of claims 20, 21, and 26—43 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Roller and Berks on.
The independent claims are “computer program product” claim 20
and “system” claim 21. Both claims call for “structurally monitoring,
measuring, and quantifying a level of motivation induced by at least one
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personal incentive applied towards achievement of a goal in at least a
plurality of individuals within the enterprise.” The Examiner’s position is
that said claim limitation is disclosed in Koller.
Koller et al. 2003/0204424 discloses the claimed features
as follows: [0030; 0034], a process which provided rewards and
incentives for achieving goals based on results of an appraisal
where the rewards and incentives vary depending on the goals
and may be determined ... [0034], measurable objectives and
employee goals and performance are measurable [0011],
objective/goal measurements [0016], at the enterprise level goals
are set and concrete/measureable initiatives are defined ... how
the objective will be reached and what measurement will be used
to determine if it was reached ... [0016], means for structurally
monitoring and measuring the effect of at least one personal
incentive on the achievement of a goal in at least a plurality of
individuals within the enterprise (i.e. does the employee meet his
objectives to receive a particular salary) [0022; 0030; 0034],
linking the attainment of objectives to an employee's salary
[0020], measuring objectives, goals, and performance [0011],
measuring objectives [0016], monitoring goals [0032], etc ...
Final Act. 19.
However, we agree with the Appellant that “the cited portions of
Koller teach, defining goals, providing incentives linked to the goals, and
measuring progress towards achievement of a goal” (App. Br. 18), not
“monitoring, measuring, and quantifying a level of motivation” as claimed.
“Measuring progress towards a goal is different from measuring and
quantifying a level of motivation, at least because an individual’s level of
motivation is different from the goal to be attained by the individual’s
activity or the progress made towards achieving that goal.” App. Br. 19.
We do not find that a prima facie case of obviousness has been made
out for the subject matter of claims 20 and 21 in the first instance by a
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preponderance of the evidence. We reach the same conclusion for the
rejection of claims 26—34 and 35—43 that depend from claims 20 and 21,
respectively.
The rejections of claims 27 and 36 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Roller, Berkson, and Nakagawa, Cooper, or
Bangel.
The rejections of claims 28 and 37 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Roller, Berkson, and Sheprow, Morrison, or
Szynalski.
These rejections of claims 27, 28, 36, and 37 which depend from
claims 20 and 21, respectively, and whose rejection similarly relies on
Koller as disclosing the claim limitation “monitoring, measuring, and
quantifying a level of motivation” are not sustained for the reasons discussed
above in not sustaining the rejection of claims 20 and 21.
NEW GROUND OF REJECTION
Claims 20, 21, and 26-43 are rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
Alice Corporation Party Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
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Application 11/384,593
Taking claim 20 as representative of the claims on appeal, the claimed
subject matter is directed to modeling human motivation. Modeling is a
fundamental building block of human ingenuity. As such it is an abstract
idea. As for limiting the application of the “modeling” idea to the field of
human motivation, this does not render it patentable. “The Court [Parker v.
Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation of a
practical application for the calculation could alone make the invention
patentable.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1371 (Fed. Cir. 2011).
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of modeling into an inventive concept.
Claim 20 defines a “computer program product comprising five steps.
The first four seek to “structurally monitor[ ], measur[e], and quantify[ ] a
level of motivation induced by” (1) “at least one personal incentive,” (2)
“community values,” (3) “dependence on supporting goal,” and (4) “at least
one relationship incentive,” each “applied towards achievement of a goal in
at least a plurality of individuals within the enterprise.” In “response to the
levels of motivation determined from said” first four steps, the fifth steps
seeks to modify the (1) “at least one personal incentive,” (2) “community
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values,” (3) “dependence on supporting goal,” and (4) “at least one
relationship incentive.”
None of these individual steps, viewed “both individually and ‘as an
ordered combination,’” transform the nature of the claim into patent-eligible
subject matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at
1297, 1298).
The structurally monitoring, measuring, quantifying, and determining
are known operations for gathering and evaluating desired information and
thus add little to patentably transform the modeling abstract idea.
Furthermore, each of the monitoring, measuring, quantifying, and
determining steps are themselves abstract ideas. For example, regarding
“monitoring,” see Wireless Media Innovations, LLC v. Maher Terminals,
LLC, 100 F. Supp. 3d 405 (D.N.J. 2015), affd, 636 F. App'x 1014 (Fed. Cir.
2016). Merely combining these abstract ideas does not render the
combination any less abstract. Cf Shortridge v. Found. Constr. Payroll
Serv., LLC, No. 14-CV-04850-JCS, 2015 WL 1739256 (N.D. Cal. Apr. 14,
2015), affd, No. 2015-1898, 2016 WL 3742816 (Fed. Cir. July 13, 2016).
Also, the wording of the steps is such that they describe certain
objectives sought to be accomplished without providing any of the technical
details that may be necessary to accomplish them. For example, the first
step is ‘ for structurally monitoring, measuring, and quantifying a level of
motivation induced by at least one personal incentive applied towards
achievement of a goal in at least a plurality of individuals within the
enterprise” (claim 21, emphasis added). But this simply aims the instruction
toward achieving a result. The desired result is unconnected to how the
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“structurally monitoring, measuring, and quantifying” should be performed
to achieve it. “Generally, a claim that merely describes an ‘effect or result
dissociated from any method by which [it] is accomplished’ is not directed
to patent-eligible subject matter.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)).
Finally, we note that claim 20 calls for using the “computer program
product in a non-transitory computer readable media for use in a data
processing system.” But any general-purpose computer available at the time
the application was filed would have satisfied these limitations. The
Specification supports that view. See, e.g., Spec. 7:6—8:25. “[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention. Stating an abstract idea “while adding
the words ‘apply if” is not enough for patent eligibility.” Alice, 134 S. Ct.
at 2358.
For the foregoing reasons, we find that claim 20 covers claimed
subject matter that is judicially-excepted from patent eligibility under § 101.
The other independent claim—system claim 21 parallels claim 1—similarly
covers claimed subject matter that is judicially-excepted from patent
eligibility under § 101. The dependent claims describe various types of
information to be gathered or evaluated which do little to patentably
transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 20, 21, and
26-43 under 35 U.S.C. § 101.
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For the foregoing reasons, the rejections are reversed but the claims
are newly rejected under §101.
CONCLUSIONS
The rejection of claims 20, 21, and 26-43 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The rejection of claims 20, 21, and 26-43 under 35 U.S.C. § 103(a) as
being unpatentable over Koller and Berkson is reversed.
The rejection of claims 27 and 36 under 35 U.S.C. § 103(a) as being
unpatentable over Koller, Berkson, and Nakagawa is reversed.
The rejection of claims 27 and 36 under 35 U.S.C. § 103(a) as being
unpatentable over Koller, Berkson, and Cooper is reversed.
The rejection of claims 27 and 36 under 35 U.S.C. § 103(a) as being
unpatentable over Koller, Berkson, and Bangel is reversed.
The rejection of claims 28 and 37 under 35 U.S.C. § 103(a) as being
unpatentable over Koller, Berkson, and Sheprow is reversed.
The rejection of claims 28 and 37 under 35 U.S.C. § 103(a) as being
unpatentable over Koller, Berkson, and Morrison is reversed.
The rejection of claims 28 and 37 under 35 U.S.C. § 103(a) as being
unpatentable over Koller, Berkson, and Szynalski is reversed.
Claims 20, 21, and 26-43 are newly rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
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DECISION
The decision of the Examiner to reject claims 20, 21, and 26-43 is
reversed.
Claims 20, 21, and 26-43 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(l)(iv) (2011).
REVERSED: 37 C.F.R, $ 41.50(b)
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