Ex Parte Hollemans et al

Patent Trials and Appeals Board

Mar 29, 2019

12095794 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/095,794 06/02/2008 Gerrit Hollemans
24737 7590 04/02/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2005P02323WOUS 5685
EXAMINER
BURKE, JEFF A
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERRIT HOLLEMANS and VINCENT P. BUIL
Appeal2018-007473
Application 12/095,794 1
Technology Center 2100
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1---6 and 8-15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Koninklijke Philips
Electronics, N.V. App. Br. 3.
Appeal2018-007473
Application 12/095,794
THE CLAIMED INVENTION
The present invention relates "to information retrieval, and in
particular, to a system and method that assists a user in locating particular
content of interest from a collection of content." Spec. 1. Independent
claim 1 is directed to a method; independent claim 6 is directed to a system;
and independent claim 10 is directed to a non-transitory computer-readable
medium. App. Br. 25-29.
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method for operating a system used for locating and
presenting particular content of interest, the content comprising
content items in a collection of content, wherein feature values
are associated with the content items and correspond to features,
the method comprising the acts:
in a system used for locating and presenting content of
interest:
providing access to a logical collection of content
comprising content items, features associated with the content
items, and feature values associated with respective features of
respective content items;
a) receiving by a content locator a command from a user
input, to logically filter the contents of the logical collection, the
command comprising a filtering feature value selected by the
user from among the feature values of content items of the
collection of content;
in response to the command, the content locator logically
filtering the collection of content items to yield a filtered logical
collection of filtered content items in a feature structure, the
filtered content items having features and feature values, the
feature values being associated with respective features of the
filtered content items,
2
Appeal2018-007473
Application 12/095,794
b) selecting a grouping feature, by one of: automatically
or via the user input, or a combination thereof, from among the
filtered content item features, based on one of: the filtering
feature value; and other feature values associated with features
of filtered content items of the filtered logical collection of
content; or a combination thereof,
c) logically grouping the filtered collection of content into
at least one grouping using the selected grouping feature, in the
feature structure;
d) determining a number of logical groupings of the at
least one grouping and a sizing based on the number of content
items of the at least one groupings;
e) altering a granularity of the grouping feature to maintain
one of: the number of groups of the at least one groupings, and
the sizing based on a number of content items, of the at least one
groupings is within predetermined limits, wherein the alteration
compnsmg:
selecting a feature of the grouping feature as the
selected grouping feature, the selected grouping feature
being correlated with the grouping feature; and
f) controlling a visual depiction of a grouping of the at
least one groupings, wherein a size based on a number of content
items, of the visually depicted grouping of the at least one
groupings is determined based on the number of items in the
groupmg.
REJECTION ON APPEAL
Claims 1---6 and 8-15 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to patent-ineligible subject matter. Final
Act. 2.
3
Appeal2018-007473
Application 12/095,794
ANALYSIS
35 U.S.C. § 101 Rejection
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]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (quotation marks and citation omitted).
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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). 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, 67 (1972)).
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
4
Appeal2018-007473
Application 12/095,794
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 ( citation 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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF p ATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a}-(c), (e}-(h) 9th Ed., Rev. 08.2017, Jan. 2018)).
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, conventional" in the field (see MPEP
§ 2106.05(d)); or
5
Appeal2018-007473
Application 12/095,794
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
USPTO Step 2A, Prong 1
Under the first step of the Alice/Mayo framework, the Examiner
determines the claimed steps "correspond to concepts identified as abstract
ideas by the courts" and are "directed to obtaining and organizing
information." Final Act. 3. According to the Examiner, the claimed
invention is directed to an "ability to filter results so as to fit a subset of
valuable potential results," which is "a well-known mental step that is
routinely performed in the human mind." Ans. 3. The Examiner concludes
the claimed invention is similar to an example:
when deciding where to eat a person might first decide that they
are hungry, making available to themselves the entire world of
restaurants that they know, then further refine that based on
Location, type of cuisine, price or any other pertinent feature, all
the while making a judgment as to whether they have an
acceptable group of places to choose from, or not. As such,
altering the granularity of search results is a well-known mental
step.
Ans. 3--4 ( citing Spec. ,r 16). According to the Examiner, the claimed
invention is directed to a "human comprehensible" amount of information,
and does not require "any non-conventional computer, network, or display
components, but merely call for the performance of the collection, analysis
and display functions on a set of generic computing devices." Ans. 4.
We agree with the Examiner's conclusion that the claimed invention
is directed to mental steps. The claimed invention, directed to filtering
6
Appeal2018-007473
Application 12/095,794
information (i.e., "receiving ... a command ... to logically filter the
content," "logically filtering the collection of content items to yield a filtered
logical collection" in response to the command), grouping the filtered
information (i.e., "selecting a grouping feature," "logically grouping the
filtered collection of content into at least one grouping"), adjusting the
grouping granularity to maintain a desired parameter (i.e., "determining" ( 1)
"a number of logical groupings of the at least one grouping" and (2) "a
sizing based on the number of content items of the at least one groupings,"
altering a granularity of the grouping feature to maintain one of: the number
of groups ... and the sizing"), and displaying the filtered and grouped
information (i.e., "controlling a visual depiction of a grouping"), can be
identified as a mental process (i.e., filtering a human-comprehensible
amount of information, grouping the filtered information, changing the
granularity of the grouping based on desired parameters, and displaying the
filtered and grouped information, can all be performed by a human mind or
using pencil and paper), which is an abstract idea. See Ans. 3--4; see also
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) ("The concept of data collection,
recognition, and storage is undisputedly well-known" and "humans have
always performed these functions."); Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1314 (Fed. Cir. 2016) (filtering files/e-mail
is a mental process); Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (filtering content on the
Internet is a mental process).
7
Appeal2018-007473
Application 12/095,794
USPTO Step 2A, Prong 2
In determining whether claim 1 is "directed to" the identified
abstract ideas, we next consider whether claim 1 recites additional
elements that integrate the judicial exception into a practical application.
For the reasons set forth below, we discern no additional element ( or
combination of elements) recited in claim 1 that integrates the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54--55.
Appellants argue the claims recite "a specific solution to the problem
of collecting and organizing a large collection of data, wherein the feature
upon which the organization is performed is adjusted based on one of a
number of groups and a size of the groups." App. Br. 23. According to
Appellants, "the subject matter claimed is not an abstract idea ... as the
subject matter claimed recites a specific step to accomplish the desired
result." App. Br. 23 (citing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d
1299 (Fed. Cir. 2018)). Specifically, Appellants argue the claims
"assertively recite a particular concrete solution in the organizing and
displaying the collected data, wherein a grouping feature is altered to retain
one of a number of groups or a size of the groups within predetermined
results." App. Br. 16.
According to the Examiner, the claimed "solution is focused on the
result of the process, i.e. providing the 'right' size of results to the user,"
which is "not ... an improvement of a computer as a tool, but" is instead
"the abstract idea of providing search results to a user, that uses the
computer as a tool." Ans. 4. The Examiner finds the claimed invention,
unlike in Finjan, is directed to a "type of feature based filtering" that
8
Appeal2018-007473
Application 12/095,794
"[h ]umans have been performing ... from time immemorial" and "the
claims merely take advantage of the graphical aspects of a computer to
better display the results." Ans. 6.
We are not persuaded by Appellants' arguments that the Examiner
erred. Appellants do not explain how the claimed invention (i.e., filtering a
human-comprehensible amount of information, grouping the filtered
information, changing the granularity of the grouping based on desired
parameters, and displaying the filtered and grouped information) is a
technological solution to a technological problem or is, otherwise, rooted in
computer technology. Instead, the claimed invention merely focuses on
altering the granularity based on the resulting amount of search results and
on the desired amount of search results. See Spec. 16 ("when the groupings
produced would be too small or large to assist the user, the system may
dynamically determine more or less granular grouping feature values and/or
different features to produce one or more of the groupings").
Appellants further argue that the claims "fail to preempt the entire
field of data organization and presentation but only claim that process which
the inventors regard as their invention." Reply Br. 11; see App. Br. 15, 21.
Although the extent of preemption is a consideration, the absence of
complete preemption is not dispositive. See, e.g., Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility."); Ultramercial, Inc. v.
Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013) ("[T]he Supreme Court
has stated that, even if a claim does not wholly pre-empt an abstract idea, it
still will not be limited meaningfully if it contains only insignificant or token
9
Appeal2018-007473
Application 12/095,794
pre- or post-solution activity-such as identifying a relevant audience, a
category of use, field of use, or technological environment.") ( citations
omitted), vacated and remanded, WildTangent, Inc. v. Ultramercial, LLC,
134 S. Ct. 2870 (2014) (remanding for consideration in light of Alice).
Therefore, even if the claims do not preempt the abstract idea, that alone is
not enough to render the claims patent-eligible.
Accordingly, we are not persuaded of error in the Examiner's
determination that claim 1 is directed to an abstract idea, and we find the
claimed additional elements do not integrate the abstract idea into a
practical application.
USPTO Step 2B
Turning to step 2 of the Alicedvfayo framework, we look to whether
claim 1 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or
(b) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. 11emorandum, 84 Fed. Reg. at 56.
The Examiner determines the claimed "hardware elements" (i.e.,
method of claim 1 is performed on a system, claim 6 is a system, and claim
15 is a computer readable medium) are "recited at a high level of generality
and are recited as performing generic computer functions routinely used in
computer applications" and "that are well-understood, routine and
conventional activities [that] amount to no more than implementing the
abstract idea with a computerized system." Final Act. 4.
As discussed above, claim 1 is directed to filtering a
10
Appeal2018-007473
Application 12/095,794
human-comprehensible amount of information, grouping the filtered
information, changing the granularity of the grouping based on desired
parameters, and displaying the filtered and grouped information, which can
be performed mentally or manually. Similarly, the claimed invention is
directed to feature based filtering, which "[h ]umans have been performing
... from time immemorial," merely take advantage of generic computer
components (i.e., "the claims merely take advantage of the graphical aspects
of a computer to better display the results"\ which is insufficient to provide
an inventive concept. See Ans. 6. Specifically, the Specification describes
computer system I 00 in which a system and associated method
.fbr per.fbrming filtering and grouping operations, in such a
manner that allows a user to locate particular content from among
a collection of content ... may be embodied, for example as a
personal computer based on a processor ... inc1ud[ing] a
keyboard for entering data ... , a monitor ... for displaying
information, a storage device ... for the storage of content, one
or more executable applications ... , one or more tables ... and
a memory unit [] to store content during execution.
Spec. 7 (emphasis added).
Appellants do not direct our attention to anything in the Specification
that indicates the claimed computer components (e.g., system, content
locator, processor) perform anything other than well-understood, routine,
and conventional functions, such as filtering and grouping data, and
displaying the filtered and grouped data. See buySAF1{ Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2015) ("That a computer receives and sends
the infonnation over a network-with no further specification-is not even
arguably inventive"); In re TLI Conunc 'ns LLC Patent Litig., 823 F.3d 607,
614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
11
Appeal2018-007473
Application 12/095,794
to add an inventive concept); Alice, 573 U.S. 208 at 2359-60 (receiving,
storing, sending information over networks insufficient to add an inventive
concept); Electric Power Group LLC v. Alstom SA, 830 F.3d 1350, 1355
(2016) ("Nothing in the claims, understood in light of the specification,
requires anything other than off-the-shelf~ conventional computer, network,
and display technology for gathering, sending, and presenting the desired
information.").
Accordingly, Appellants have not adequately explained how the
claims are perfonned such that they are not routine, conventional functions
of a generic computer. Therefore, we sustain the Examiner's 35 U.S.C. §
101 rejection of independent claim L as well as independent claims 6 and 10
with commensurate limitations, and dependent clairns 2-5, 8, 9, and 11-15,
not separately argued.
DECISION
The Examiner's rejection of claims 1-6 and 8-15 under 35 U.S.C.
§ 101 is affirmed.
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
12