Ex Parte Jamrog et al

Patent Trials and Appeals BoardMar 29, 2019

14107313 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/107,313 12/16/2013 40412 7590 04/02/2019 IBM CORPORATION-AUSTIN (JVL) C/0 LESLIE A. VAN LEEUWEN 6123 PEBBLE GARDEN CT. AUSTIN, TX 78739 FIRST NAMED INVENTOR Daniel M. Jamrog 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. A US920130281 US 1 1063 EXAMINER VO,HUYENX ART UNIT PAPER NUMBER 2659 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): leslie@vI-patents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL M. JAMROG, JASON D. LAVOIE, NICHOLAS W. ORRICK, and KRISTIN A. WITHERSPOON Appeal 2018-004112 Application 14/107 ,313 Technology Center 2600 Before CARLA M. KRIVAK, ERIC B. CHEN, and DAVID J. CUTITTA II, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the final rejection of claims 1, 2, 5, 6, 8, 9, 12, 13, 15, 16, 19, and 20. Claims 3, 4, 7, 10, 11, 14, 17, and 18 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. STATEMENT OF THE CASE Appellants' invention relates to a Question and Answer (QA) System, an artificially intelligent computer system capable of answering questions posed in natural language. (i-f 1.) Appeal 2018-004112 Application 14/107 ,313 Claim 1 is exemplary: 1. A method, in an information handling system comprising a processor and a memory, of adjusting time dependent terminology in a question and answering (QA) computer system, the method comprising: [i] ingesting a set of documents to produce a base corpus, the base corpus stored in a computer-readable data store accessible by the QA computer system; [ii] acquiring a plurality of lexicons from one or more feeds from social media; [iii] performing a semantic analysis of one or more terms in the plurality of lexicons, wherein the semantic analysis determines a context and a current usage for the one or more terms; [iv] in response to determining that the current usage of a selected term differs from a standard usage of the selected term, updating a trend value corresponding to the lexicon associated with the selected term; [ v] updating the base corpus of the QA computer system according to the plurality of lexicons, the updating resulting in an updated corpus; and [ vi] answering, by the QA computer system, a question according to the updated corpus, wherein the answering comprises: searching the updated corpus for a plurality of candidate answers to the question, wherein at least one of the plurality of candidate answers is associated with one of the plurality of lexicons; scoring the plurality of candidate answers, wherein the scoring for each answer is based partly on the trend value of the lexicon associated with the candidate answer; and providing one or more of the plurality of candidate answers based on the scoring. 2 Appeal 2018-004112 Application 14/107 ,313 Claims 1, 2, 5, 6, 8, 9, 12, 13, 15, 16, 19, and 20 stand rejected under 35 U.S.C. Â§ 101 as directed to patent-ineligible subject matter. ANALYSIS We are unpersuaded by Appellants' arguments (App. Br. 8-13; see also Reply Br. 2--4) that independent claims 1, 8, and 15 are directed to patent-eligible subject matter under 35 U.S.C. Â§ 101. The Examiner determined that "claims 1, 8, and 15 are directed to a patent-ineligible abstract concept of adjusting time dependent terminology in a question and answering system" and "[a]ll the steps of ... claims 1, 8, and 15 are an abstract concept that could be performed in the human mind, or by a human using a pen and paper." (Final Act. 3.) In particular, the Examiner determined that "a human can observe text of social media posts and assign trend scores to each lexicon, and then update the corpus with the lexicons (for recording the lexicons on paper and/or adjusting scores of existing lexicons)" and "[ a ]t runtime, when a question is received, a human can search the corpus (lexicons recorded paper) and provide one or more answers associated with lexicons that have scores above a certain threshold level." ( Ans. 3.) The Examiner further determined that "claims 1, 8, and 15 do not have any additional limitations that represent a patent-eligible application of the abstract concept." (Final Act. 4.) We agree with the Examiner's determinations and ultimate conclusion that the claims are directed to patent-ineligible subject matter. An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include 3 Appeal 2018-004112 Application 14/107 ,313 implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). 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., 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 ( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise 4 Appeal 2018-004112 Application 14/107 ,313 statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). 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 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 (quotation marks 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 Â§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). Under that guidance, we first look to whether the claim recites: 5 Appeal 2018-004112 Application 14/107 ,313 (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 MPEP Â§ 2106.05(a}-(c), (e}-(h)). 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 are not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(d)); or (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 84 Fed. Reg. at 56. Step One Are the claims at issue directed to a patent-ineligible concept? Claim 1 is a method claim, which falls within the "process" category of 35 U.S.C. Â§ 101. Likewise, claim 8 is a system claim having several steps, which falls within the "manufacture" category of 35 U.S.C. Â§ 101 and category of 35 U.S.C. Â§ 101, and claim 15 is a computer readable medium claim, which falls within the "manufacture" category of 35 U.S.C. Â§ 101. Therefore, claims 1, 8, and 15 fall within one of the four statutory categories of patentable subject matter identified by 35 U.S.C. Â§101 Although claims 1, 8, and 15 fall within the statutory categories, we must still determine whether the claims are directed to a judicial exception, namely an abstract idea. See Alice, 134 S. Ct. at 2355. Thus, we must 6 Appeal 2018-004112 Application 14/107 ,313 determine whether the claims recite a judicial exception and whether the exception is integrated into a practical application. See 84 Fed. Reg. at 52- 5 5. If both elements are satisfied, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id. Step 2A, Prong One Independent claim 1 is a method claim, and includes the following limitations: "[i] ingesting a set of documents to produce a base corpus ... ," "[ii] acquiring a plurality of lexicons ... ," and "[iii] performing a semantic analysis of one or more terms in the plurality of lexicons, wherein the semantic analysis determines a context and a current usage for the one or more terms." Thus, the method steps of claim 1 involve mental processes. In particular, the method steps of claim 1 can be performed either by human thought alone, by a human using pen and paper, or by humans without a computer. For example, a person could: (1) read several national news stories; (2) receive queries with respect to the national news involving infrequently used terms ( e.g., "budget sequestration" or "filibuster"); and (3) research the meaning of such infrequently used terms. Independent claim 1 further includes the following limitations: "[iv] in response to determining that the current usage of a selected term differs from a standard usage of the selected term, updating a trend value corresponding to the lexicon associated with the selected term," "[ v] updating the base corpus ... according to the plurality of lexicons, the updating resulting in an updated corpus," and"[ vi] answering ... a question according to the updated corpus." Likewise, these remaining method steps of claim 1 involve mental processes, and can also be performed either by 7 Appeal 2018-004112 Application 14/107 ,313 human thought alone, by a human using pen and paper, or by humans without a computer. For example, a person could: (1) manually or mentally track the number of times a query is made with respect to "budget sequestration" and "filibuster"; (2) read additional news stories with respect to the Congressional budgeting process; and (3) answer the original query. Specifically, with respect to the"[ vi] answering," as determined by the Examiner, "a human can observe text of social media posts and assign trend scores to each lexicon, and then update the corpus with the lexicons" and "when a question is received, a human can search the corpus (lexicons recorded paper) and provide one or more answers associated with lexicons that have scores above a certain threshold level" thus, answering a question based on the scoring, as claimed. (Ans. 3.) Because all the method steps of claim 1 can be performed either by human thought alone, by a human using pen and paper, or by humans without a computer, claim 1 is directed to mental processes, which is an abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 13 66, 13 72-73 (Fed. Cir. 2011) ("[U]npatentable mental processes" include "steps [that] can be performed in the human mind, or by a human using a pen and paper"); see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) ("[t]he series of steps covered by the asserted claims ... could all be performed by humans without a computer"). Claims 8 and 15 recite limitations similar to those discussed with respect to claim 1. Thus, claims 8 and 15 are also directed to a judicial exception. 8 Appeal 2018-004112 Application 14/107 ,313 Step 2A, Prong Two Because claims 1, 8, and 15 are directed to a judicial exception, we next determine if the claims recite additional elements that integrate the judicial exception into a practical application. Method claim 1 recites "[i] ingesting a set of documents to produce a base corpus, the base corpus stored in a computer-readable data store accessible by the QA computer system," "[ii] acquiring a plurality of lexicons from one or more feeds from social media," "[ v] updating the base corpus of the QA computer system according to the plurality of lexicons," and"[ vi] answering, by the QA computer system, a question according to the updated corpus" ( emphases added). Thus, the recited "a computer-readable data store," "feeds from social media," and "QA computer system," are merely tools for performing the abstract idea. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 (Fed. Cir. 2016) ("the claims are directed not to an improvement in cellular telephones but simply to the use of cellular telephones as tools in the aid of a process focused on an abstract idea"). Accordingly, we determine claims 1, 8, and 15 do not recite additional elements that integrate the judicial exception into a practical application. First, Appellants argue that the "claims are inextricably tied to and necessarily rooted in computer technology, i.e. the field of question and answering (QA) computer systems, and are distinct from the types of concepts found by the courts to be abstract" and "Appellant claims specific improvements in the technical field of QA computer systems, particularly in order to provide better and more accurate answers to a user." (App. Br. 8.) However, other than conclusory stating that the claims recite "specific 9 Appeal 2018-004112 Application 14/107 ,313 improvements in the technical field of QA computer systems" similar to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Appellants have not provided any additional explanation or evidence to support this position. Second, Appellants argue that "the Examiner describes Appellant's claims 'at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention' and "[t]he Examiner's unreasonably high-level and overly-generalized view of Appellant's claims leads to the erroneous conclusion that Appellant's claims are directed to an 'abstract concept that could be performed in the human mind, or by a human using a pen and paper."' (App. Br. 10.) However, the Examiner has identified the appropriate judicial exception as "mental processes" and the Examiner has compared the claimed concepts of independent claim 1 to the appropriate Federal Circuit decision (i.e., CyberSource). Accordingly, the Examiner has met the burden of a general prima facie notice requirement. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) ("[A]ll that is required of the [Patent] [O]ffice to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement ofÂ§ 132."). Third, Appellants argue that the limitations recited in claim 1 "could not be performed by a human, either in the mind or using a pen and paper, that result in an updated corpus for use by a QA computer system" and "Appellant is at a loss to understand how a human could acquire lexicons from social media feeds, semantically analyze the terms in the lexicons, update trend values, and end up with an updated corpus to be used by a QA 10 Appeal 2018-004112 Application 14/107 ,313 computer system to answer questions." (App. Br. 11; see also Reply Br. 2- 4.) However, the Examiner has provided a reasonable explanation as to how the limitations of claim 1 are related to "mental processes." (Ans. 3.) Appellants, other than providing a conclusory statement that "[ t ]hese are specific limitations, that could not be performed by a human, either in the mind or using a pen and paper" (App. Br. 11 ), have not provided any persuasive arguments as to why the Examiner's determinations are improper. Moreover, "the inability for the human mind to perform each claim step does not alone confer patentability." FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). Last, Appellants argue that similar to Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the "claims are 'directed to a specific implementation of a solution to a problem in the software arts,' i.e. improving the fields of QA computer systems and adjusting time dependent terminology in a QA system in order to provide better and more accurate answers to a user" and "when looking at Appellant's Specification, it is clear that the claimed invention does not merely invoke the computer as a tool, but improves the capabilities of the QA computer system." (App. Br. 13.) However, other than providing a conclusory statement that the "invention seeks to improve on conventional approaches by introducing 'context attributes' to assist a processor," Appellants have not provided any additional explanation or evidence to support this position. For example, Appellants have not provided citations to the Specification to demonstrate that the claimed invention is an improvement of an existing technology or demonstrated a deficiency in the prior art. See Enfzsh, 822 F.3d at 1337 (Fed. Cir. 2016) ("[O]ur conclusion that the claims are directed to an 11 Appeal 2018-004112 Application 14/107 ,313 improvement of an existing technology is bolstered by the specification's teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements"). Thus, we determine Appellants' claims do not integrate the judicial exception into a practical application, as there is no meaningful limit imposed on the judicial exception (i.e., there is no improvement in the functioning of a computer or improvement to technology). Step 2B Is there something else in the claims that ensures that they are directed to significantly more than a patent ineligible concept? Because claims 1, 8, and 15 are directed to a judicial exception, we next determine, according to Alice, whether these claims recite an element, or combination of elements, that is enough to ensure that the claim is directed to significantly more than an abstract idea. That is, does an additional element or combination of elements add a specific limitation that is not well-understood, routing, conventional activity in the field? Claim 1 is a method claim, which includes a "computer-readable data store," "QA computer system," and "feeds from social media." Claim 8, a system claim, and claim 15, a computer readable medium claim, recite similar hardware components. With respect to the claimed hardware components, Appellants' Specification discloses the following: Many of the information handling systems include nonvolatile data stores, such as hard drives and/or nonvolatile memory. Some of the information handling systems shown in FIG. 1 12 Appeal 2018-004112 Application 14/107 ,313 depicts separate nonvolatile data stores (server 160 utilizes nonvolatile data store 165, and mainframe computer 170 utilizes nonvolatile data store 17 5. The nonvolatile data store can be a component that is external to the various information handling systems or can be internal to one of the information handling systems. (Spec. ,r 19 .) Figure 1 depicts a schematic diagram of one illustrative embodiment of a question/answer creation (QA) system 100 in a computer network 102. Knowledge manager ... may include a computing device 104 ( comprising one or more processors and one or more memories, and potentially any other computing device elements generally known in the art including buses, storage devices, communication interfaces, and the like) connected to the computer network 102. (Spec. ,r 13.) Knowledge manager 100 may be configured to receive inputs from various sources. For example, knowledge manager 100 may receive input from the network 102, a corpus of electronic documents 106 or other data, a content creator 108, content users, and other possible sources of input. In one embodiment, some or all of the inputs to knowledge manager 100 may be routed through the network 102. The various computing devices 104 on the network 102 may include access points for content creators and content users. (Spec. ,r 14.) Using engine 300, QA system 100 will digest real time feeds from sources, such as social media websites 310 .... (Spec. ,r 26.) The generalized functional terms by which the computer components are described reasonably indicate that Appellants' Specification discloses: (i) conventional data stores (e.g., hard drives or nonvolatile memory); (ii) conventional question/answer creation (QA) system 100, including 13 Appeal 2018-004112 Application 14/107 ,313 knowledge manager 104 having computing device 104; and (iii) a conventional social media website 310, which is displayed on a computing device. In view of Appellants' Specification, the claimed hardware components, including "a computer-readable data store," "QA computer system," and "feeds from social media" reasonably may be determined to be generic, purely conventional computer elements. Thus, the claims do no more than require generic computer elements to perform generic computer functions at a high level of generality, rather than improve computer capabilities. Appellants argue that the "claims do not seek to tie up the entire subject matter area of QA computer systems, or the use of adjusting terminology values in QA computer systems" and "Appellant does not attempt to restrict others from practicing every conceivable method of adjusting terminology values in QA computer systems." (Reply Br. 4.) However, although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Where claims are deemed to recite only patent ineligible subject matter under the two-step Alice analysis, as they are here, "preemption concerns are fully addressed and made moot." Id. Thus, we agree with the Examiner that claims 1, 8, and 15 do not provide an inventive concept or subject matter that is unconventional. Accordingly, we sustain the rejection of independent claims 1, 8, and 15 under 35 U.S.C. Â§ 101. Claims 2, 5, 6, 9, 12, 13, 16, 19, and 20 depend from independent claims 1, 8, and 15. We sustain the rejection of claims 2, 14 Appeal 2018-004112 Application 14/107 ,313 5, 6, 9, 12, 13, 16, 19, and 20 under 35 U.S.C. Â§ 101 argued together and for the same reasons discussed with respect to independent claims 1, 8, and 15. (App. Br. 14). DECISION The Examiner's decision rejecting claims 1, 2, 5, 6, 8, 9, 13, 15, 16, 19, and 20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 15