Ex Parte Greenwald et alDownload PDFPatent Trial and Appeal BoardSep 28, 201811465729 (P.T.A.B. Sep. 28, 2018) Copy Citation 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). 2 Appeal2016-003635 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 3 Appeal2016-003635 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 4 Appeal2016-003635 Application 11/465,729 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). 5 Appeal2016-003635 Application 11/465,729 ("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. 6 Appeal2016-003635 Application 11/465,729 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. 7 Appeal2016-003635 Application 11/465,729 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 8 Appeal2016-003635 Application 11/465,729 ( 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. 9 Appeal2016-003635 Application 11/465,729 "[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 10 Copy with citationCopy as parenthetical citation