Ex Parte Greenwald et al

Patent Trial and Appeal Board

Sep 28, 2018

11465729 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/465,729 08/18/2006
2101 7590 10/02/2018
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
FIRST NAMED INVENTOR
Anthony G. Greenwald
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.
3096/102 1755
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
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):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY G. GREENWALD and N. SRIRAM
Appeal2016-003635
Application 11/465,729 1
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
1 The subject application is a continuation-in-part of Application No.
11/455,493, which is before the Patent Trial and Appeal Board in Appeal No.
2017-004103. See Spec. ,r 1.
Appeal2016-003635
Application 11/465,729
STATEMENT OF THE CASE2,3
Anthony G. Greenwald and N. Sriram (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner's decision to reject claims 1-9 and 11-
14 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter. Claim 10 has been canceled. An Oral Hearing in accordance with
37 C.F.R. § 41.47 was held on June 26, 2018. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "generally relates to methods for
measuring strengths of associations and, more particularly, the invention
relates to methods of measuring the strengths of associations of
multidimensional traits." See Spec. ,r 2, Figs. 1, 2.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A method of measuring a subject's strength of associations
of multidimensional traits involving each of a first pair of first
and second categories with each of a second pair of third and
2 The subject application was previously before the Patent Trial and Appeal
Board in Appeal No. 2012-005527. See Decision dated July 24, 2014. In that
Decision, the adverse decision of the Examiner was REVERSED and a New
Ground of Rejection was entered pursuant to 37 C.F.R. § 41.50(b). Following
that Decision, Appellants reopened prosecution and further amended the
claims.
3 Appellants present additional evidence in the Declaration of co-inventor,
Anthony G. Greenwald, the "Greenwald Declaration" filed under 37 C.F.R. §
1.132 on January 22, 2015. See Appeal Brief, Evidence App. 28-58
(hereinafter "Appeal Br.") (dated Aug. 28, 2015).
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Application 11/465,729
fourth categories, without any use of single-task practice trials,
the method comprising:
selecting a first target concept for the first category and a
second target concept for the second category;
selecting a first trait for the third category and, for the
fourth category, a plurality of alternative traits to provide a basis
for contrasting with the first trait;
in a first set of trials, causing presentation, via a display
device coupled to a computer accessible to a subject, of a first
series of exemplars, the first series of exemplars including
exemplars from all four categories;
storing performance by the subject of a series of tasks in
the first set of trials, wherein the tasks in the first set of trials are
to respond in a first manner when there is presented an exemplar
of either the first category or the third category and in a second
manner when there is presented an exemplar in any category
other than the first category or third category, and wherein the
task as to the second manner of response has no explicit reference
to the second or fourth category;
in a second set of trials, causing presentation, via the
display device, of a second series of exemplars in the second set
of trials, the second series of exemplars including exemplars
from all four categories;
storing performance by the subject of a series of tasks in
the second set of trials, wherein the tasks in the second set of
trials are to respond in a first manner when there is presented an
exemplar of either the second category or the third category and
in a second manner when there is presented an exemplar in any
category other than the second category or third category, and
wherein the task as to the second manner of response has no
explicit reference to the first or fourth category;
measuring, in a first computer process, for each response
in each trial, a time elapsed between exemplar presentation to the
subject and response of the subject via the computer to the
presented exemplar, to produce a latency measurement therefor;
and
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Application 11/465,729
in a second computer process, calculating a measure of the
subject's strength of associations of multidimensional traits
involving each of the first and second categories with each of the
third and fourth categories from the latency measurements,
so that performance data from the subject is obtained
without any use of single-task practice trials.
ANALYSIS
Preemption
Appellants argue the claimed invention "does not preempt the
measurement of a subject's strength of associations of multidimensional
traits." Appeal Br. 21-23.
Although preemption may denote patent ineligibility, its absence does
not demonstrate patent eligibility. See Fair Warning, IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). We are not persuaded by
Appellants' preemption argument because for claims covering a patent
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Mayo/Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We conduct
such an analysis under the Mayo/Alice framework below.
Mayo/Alice Step 1
The Supreme Court has established "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 71-73 (2012)).
Under that framework, we first "determine whether the claims at issue are
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directed to one of those patent-ineligible concepts"-i.e., a law of nature, a
natural phenomenon, or an abstract idea. Id. If so, we secondly "consider
the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application. Id. ( quoting Mayo,
566 U.S. at 78, 79). The Supreme Court has described the second step of the
analysis as "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, 132 S. Ct. at 72-
73).
The Examiner determines that claim 1 "is an example of a method of
organizing human activities, comprised of a series of mental steps which
could be performed entirely by the human mind, or using a pen and paper,
and is therefore an abstract idea." Final Act. 2; see also Ans. 3---6. 4
Appellants contend that "the claims are crystal clear that use of a
computer is not optional but required for the latency measurements and
determinations." Appeal Br. 14. In particular, Appellants contend that
"[t]he latency measurement that is made for each response is not an
abstraction, but a real measurement of time in fractions of a second required
by the claim to be made by the computer" "[b ]ecause these [latency]
differences are of the order of 250-300 msec ... , a human is incapable of
measuring latencies with sufficient precision to achieve an operative
implementation of the method of the invention." Id.; see also id. at 15
4 Final Office Action (hereinafter "Final Act.") (dated Mar. 30, 2015);
Examiner's Answer (hereinafter "Ans.") (dated Dec. 18, 2015).
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("Because the difference in latency is significant when it is 250 msec, it
necessary to record latency with an accuracy much greater than 250 msec in
order to detect a difference between two latency measurements." Stated
differently, "there is no basis for the assertion that the subject matter claimed
herein can be performed without a computer. Use of a computer or
comparably precise automated measurement device is essential to the
method claimed in this application."); id. at 18 ("[T]he machine is
necessary because an unaided human cannot realistically perform the
measurement."); Reply Br. 2---6; Greenwald Declaration ,r,r 7-10. 5
As an initial matter, the Examiner correctly points out that "[t]he
claims do not require any particular level of precision in the latencies being
measured, and certainly make no mention of latencies being measured in the
order of250-350 msec." See Ans. 4; In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (Limitations not appearing in the claims cannot be relied upon for
patentability). The Examiner further correctly points out that "the
[S]pecification states that 'it is regularly observed that the response times for
Task B responses average 250-350 msec or more slower than for Task A
responses."' Ans. 4--5 ( citing Spec. ,r 27 ( emphasis added)). 6 The Examiner
reasons that
the [S]pecification does not even limit the disclosed invention to
using latencies of between 250-350 msec, since it allows that the
difference in latencies may very broadly be anything more than
350 msec. Therefore, the claims cannot properly be construed as
limiting the latency measurements to 250-350 msec, and
Appellant[s'] arguments that the claimed measuring of elapsed
5 Reply Brief (hereinafter "Reply Br.") (filed Feb. 18, 2016).
6 We note that this language is recited in paragraph 27 of the Specification not
paragraph 19. See Spec. ,r,r 19, 27; see also Appeal Br. 14; Ans. 4.
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time must be performed by a computer are not persuasive. The
evidence provided in the Greenwald Declaration and the
corresponding arguments are not sufficient to show that the
claimed concept cannot be performed manually by a person,
since the person of ordinary skill in the art would recognize that
latency measurements of 350 msec or more could be adequately
performed by a person. Accordingly, it is submitted that the
claimed concept is a series of mental steps that could be
performed by a person, and is properly characterized as a method
of organizing human activities, or as an idea 'of itself ... , and
is therefore an abstract idea.
Ans. 5.
Appellants do not provide persuasive evidence or argument apprising
us of Examiner error. Moreover, Appellants' Specification further discloses
that "[t]he test may be administered without the sub;ect using a computer,
e.g., over a telephone or a written test. The latency may then be determined
by measuring the time the subject takes to answer the questions for the first
set of trials and the second set of trials." Spec. ,r 33 (emphases added).
Thus, when read in light of the Specification, claim 1 's measuring and
calculating steps for latency "could be performed entirely in the human
mind, or using a pen and paper." Final Act. 3. We therefore agree with the
Examiner that claim 1 recites a series of mental steps. Id. at 2; "[M]ental
processes are a subcategory ofunpatentable abstract ideas." Synopsis, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (internal
citation and quotation marks omitted). Therefore, for purposes of Step 1 of
the Mayo/Alice analysis, we agree with the Examiner that claim 1 is directed
to a patent-ineligible abstract idea.
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Mayo/Alice Step 2
Where, as here, the claims are found to be "directed to" a patent-
ineligible concept, we then "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. 79).
This analysis has been characterized as the search for an "inventive concept"
- something sufficient to ensure that the claim amounts to "significantly
more" than the abstract idea itself. Id. (quoting Mayo, 566 U.S. 71-73).
With respect to Mayo-Alice step 2, the Examiner finds the claimed
limitations are merely instructions to implement the abstract idea on a
computer and 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. 2-3. In particular,
the Examiner finds "displaying information on a computer display,
measuring elapsed time and latency, and performing calculating based on the
latency measurements" as well-understood, routine, and conventional
computer functions. Final Act. 3. Therefore, according to the Examiner, the
recited limitations in independent claim 1 do not amount to significantly
more than the abstract idea itself. Id. at 2-3; see also Ans. 6.
However, the Examiner describes the claims at such a high level of
abstraction and untethered from the language of the claims, which all but
ensures that the exceptions to§ 101 swallow the rule. See Alice, 134 S. Ct.
at 2354 (noting that "we tread carefully in construing this exclusionary
principle [ of laws of nature, natural phenomena, and abstract ideas] lest it
swallow all of patent law"); cf Diamond v. Diehr, 450 U.S. 175, 189 n.12
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( 1981) ( cautioning that overgeneralizing claims, "if carried to its extreme,
make[ s] all inventions unpatentable because all inventions can be reduced to
underlying principles of nature which, once known, make their
implementation obvious").
Whether a claim element or combination of elements would have been
well-understood, routine, and conventional to a skilled artisan in the relevant
field at a particular point in time may require "'weigh[ing] evidence,"'
"'mak[ing] credibility judgments,"' and addressing "'narrow facts that
utterly resist generalization."' Berkheimer v. HP Inc., 890 F.3d 1369, 1370
(Fed. Cir. 2018) ( quoting US. Bank Nat 'l Ass 'n ex rel. CW Capital Asset
Mgmt. LLC v. The Village at Lakeridge, LLC, 138 S. Ct. 960, 967 (2018)
(quoting Pierce v. Underwood, 487 U.S. 552, 561---62 (1988)). The Supreme
Court in Alice asked whether the claimed activities were "'previously known
to the industry,"' and in Mayo asked whether they were "'previously
engaged in by researchers in the field."' Berkheimer, 890 F.3d at 1370
( quoting Alice, 134 S. Ct. at 2359; Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 73 (2012). Indeed, the Court recognized that "'in
evaluating the significance of additional steps, the § 101 patent-eligibility
inquiry and, say, the § 102 novelty inquiry might sometimes overlap."'
Berkheimer, 890 F.3d at 1370 (quoting Mayo, 566 U.S. at 90). The Federal
Circuit acknowledged that ultimately, the question of patent eligibility is one
of law but, in fact, every other type of validity challenge is either entirely
factual ( e.g., anticipation, written description, utility), a question of law with
underlying facts (e.g., obviousness, enablement), or a question of law that
may contain underlying facts ( e.g., indefiniteness). Id. at 1370.
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"[W]hether claim limitations recite activities that were well-
understood, routine, and conventional in the relevant field at a particular
point in time ... is a question of historical fact, not a legal question of claim
scope." Id. at 1371 n.3. Because the patent challenger bears the burden of
demonstrating that the claims lack patent eligibility, there must be evidence
supporting a finding that the additional elements were well-understood,
routine, and conventional. Id. at 1370-71.
We agree with Appellants that the Examiner has not provided
evidence of Record, which demonstrates that the specific claim recitations
are well-understood, routine, and conventional. See Appeal Br. 20; see also
Reply Br. 7-8.
For the above reasons, we do sustain the Examiner's rejection of
claims 1-9 and 11-14 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-9 and
11-14 as being directed to patent-ineligible subject matter.
REVERSED
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