Ex Parte Eder

Patent Trial and Appeal Board

Nov 19, 2018

11262146 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/262,146 10/28/2005
86636 7590 11/19/2018
BRUNDIDGE & STANGER, P.C.
1925 BALLENGER A VENUE, STE. 560
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Jeffrey Scott Eder
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.
2495-2.747BS 8784
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
11/19/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY SCOTT EDER
Appeal2017-000138
Application 11/262, 146
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 21-37 and 44--49 under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more. The
Appellant's representative appeared for oral argument on October 23, 2018.
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
1 Throughout this decision, we refer to the Appellant's Appeal Brief
("Appeal Br.," filed Jan.14, 2016), Reply Brief ("Reply Br.," filed Sept. 26,
2016), and Specification ("Spec.," filed Oct. 28, 2005), to the Examiner's
Answer ("Ans.," mailed July 26, 2016) and Final Office Action ("Final
Act.," mailed June 29, 2015), and to the Transcript ("Tr.") of the oral
argument held October 23, 2018.
2 According to the Appellant, the real party in interest is "Square Halt
Solutions, Limited Liability Company." Appeal Br. 1.
Appeal2017-000138
Application 11 /262, 146
STATEMENT OF THE CASE
The Appellant's invention "relates to a computer based method of and
system for context search for an organization, organization combination or
subset of an organization including an individual, a team or a division."
Spec. 2.
Claims 21, 26, 31, and 44 are the independent claims on appeal.
Claim 21 (Appeal Br. 30-31 (Claims App.)) is illustrative of the subject
matter on appeal and is reproduced below (with added bracketing for
reference):
21. A computer-implemented management method,
compnsmg:
[(a)] storing, by a computer processor, a measure
definition of a measurable and a plurality of level definitions of
organization levels for one or more organizations;
[ (b)] collecting data, by the computer processor, from a
plurality of data sources;
[ ( c)] developing, by the computer processor, one or more
context layers for each of the organization levels from the data
and the measurable, wherein the one or more context layers
include at least an instant impact context layer that comprises
information regarding a short-term impact of one or more
business actions, and a mission impact context layer that
comprises information regarding a long-term impact on each of
one or more m1ss10n measures;
[ ( d)] developing, by the computer processor, a context
frame that comprises a measure model of the measurable and
one or more of the context layers, including the instant impact
context layer and the mission impact context layer, for the
organization levels of the one or more organizations by learning
from the data, wherein the context frame summarizes a measure
performance situation for the one or more organization levels;
and
2
Appeal2017-000138
Application 11 /262, 146
[ ( e)] providing, by the computer processor, one or more
applications to manage a measure performance for the one or
more organization levels;
[(f)] wherein the applications utilize the context frame
that includes the instant impact context layer and the mission
impact context layer, the measure model comprises a single
quantitative output variable, and the measure model identifies a
relative contribution of one or more elements and one or more
factors to the measurable for the one or more organizations.
ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "'long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable."' Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588-89 (2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (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 that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. (emphasis
added) (citing Mayo, 566 U.S. at 79). If so, the second step is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether the additional elements "'transform the nature of the
3
Appeal2017-000138
Application 11 /262, 146
claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S.
at 78-79).
Turning to step one of the Mayol Alice two-step framework, we
consider the claims "in their entirety to ascertain whether their character as a
whole is directed to excluded subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). The question is
whether the claims as a whole "focus on a specific means or method that
improves the relevant technology" or are "directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
Here, the Examiner determines that the claims "recite the abstract idea
of measuring performance for different levels within an organization which
has been identified by the courts as both an abstract idea a fundamental
economic practice and of organizing human activities" (Final Act. 3) and are
"directed to the concept of comparing new and stored information and using
rules to identify options as well as organizing information through
mathematical correlations with the aid of a generic computer" (id. at 4); see
also Ans. 2 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed.
Cir. 2014)). The Appellant does not state to what it considers the claims
directed, but contends the Examiner's determination is in error because
"Claim 21 sets forth features that are more than mere organization and
comparison of data." Appeal Br. 15.
The Specification provides evidence as to what the claimed invention
is directed. The Title of the Specification provides for "A CONTEXT
SEARCH SYSTEM," and the Background section states that the "invention
4
Appeal2017-000138
Application 11 /262, 146
relates to a computer based method of and system for context search for an
organization, organization combination or subset of an organization
including an individual, a team or a division" (Spec. 2). The Summary
section provides that:
It is a general object of the present invention to provide a
novel, useful system that develops, analyzes, stores and applies
complete context information for use in searching, sorting and
displaying data, information and/or knowledge for any
organization, organization combination or subset of an
organization including an individual, a team or a division with
one or more quantifiable missions.
Id. Independent claim 21 provides for a computer-implement method
comprising the steps of (a) storing data of a measure definition,
(b) collecting data, ( c) developing context layers, ( d) developing a context
frame, and ( e) providing an application to manage measurement data. See
Appeal Br. 30-31 (Claims App.). Independent claims 26, 31, and 44
provide for a system, storage device, and program product, respectively, to
perform similar functions to that of claim 21. See id. at 32-34, 36, 37. As
such, we address the independent claims as a group with claim 21
representative.
A context layer, as recited in limitation ( c) of claim 21, is defined in
the Specification as "each different type of information." Spec. 8. A
context frame, as recited in limitation ( d), is defined as "[ e Jach different
combination of context layers, organization levels and organizations" (id.)
and comprises a measure model of the measurable, one or more of the
context layers, and/ or a measure relevance "by learning from the data"
( claims 21, 26, 31, 44 (Appeal Br. 30, 32, 34, 36 (Claims App.))). The
applications provided in limitation ( e) utilize the context frame, as recited in
5
Appeal2017-000138
Application 11 /262, 146
limitation ( f). The term "developing" as recited in limitations ( c) and ( d) is
not specifically defined. The dictionary definitions of "develop" include "to
set forth or make clear by degrees or in detail," "to work out the possibilities
of," and "to create or product especially by deliberate effort over time."
Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/
develop, last visited Nov. 7, 2018. The Appellant contends that developing
a context frame by learning from data, i.e., limitation (d), is creating a new
machine-learning decision-making process by weighing data according to
specific rules. See Tr. 8, 11. 14--16; 9, 1. 9 through 13, 1. 15.
In light of the evidence, we agree with the Appellant that the
Examiner's characterization of claim 21 as directed to "measuring
performance for different levels within an organization" (Final Act. 3) by
"comparing new and stored information and using rules to identify options
as well as organizing information through mathematical correlations" (id.
at 4) does not consider the claim as a whole (see Appeal Br. 15). We
determine that the claim is more accurately characterized as being directed
to knowledge based performance management by developing a model by
learning from data and providing applications that utilize that model. We
make no determinations as to whether this is an abstract idea, is a "specific
means or method that improves the relevant technology," or is "a result or
effect that itself is the abstract idea and merely invokes generic processes
and machinery." McRO, 837 F.3d at 1314.
Because we find error in the Examiner's determination as to what the
independent claims are directed under the first step of the Mayo/Alice
framework, we do not reach the second step. And, we do not sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 21-37 and 44--49.
6
Appeal2017-000138
Application 11 /262, 146
DECISION
The Examiner's rejection of claims 21-37 and 44--49 under 35 U.S.C.
§ 101 is REVERSED.
REVERSED
7