Ex Parte KELKAR et al

Patent Trials and Appeals BoardMay 17, 2019

13173115 - (D) (P.T.A.B. May. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/173, 115 06/30/2011 Bhooshan Prafulla KELKAR 67046 7590 05/21/2019 HOLLAND & KNIGHT 10 ST. JAMES A VENUE BOSTON, MA 02116-3889 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. IN920110108US 1/00220 8581 EXAMINER MISIASZEK, AMBER AL TSCHUL ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 05/21/2019 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): patentdocketing@hklaw.com robyn.lecesse@hklaw.com Daniel.Juffre@hklaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BHOOSHAN PRAFULLA KELKAR and MARESH SHIVRAM PARADKAR Appeal2018-003223 Application 13/173,115 1 Technology Center 3600 Before DAVID M. KOHUT, ERIC B. CHEN, and JOSEPH P. LENTIVECH, 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 7, 9, 12, 13, 15, 22, and 23. Claims 1-6, 8, 10, 11, 14, 16-21, 24, and 25 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 According to Appellants, the real party of interest is "International Business Machines Corporation." (Br. 4.) Appeal2018-003223 Application 13/173,115 STATEMENT OF THE CASE Appellants' invention relates to "human resource analytics using profile data." (Abstract.) Claim 7 is exemplary: 7. A computer program product residing on a non-transitory computer readable storage medium having a plurality of instructions stored thereon, which, when executed by a processor, cause the processor to perform operations compnsmg: receiving historical project data, wherein the historical project data includes at least one profile of at least one historical project team member, one or more historical project requirements, and one or more historical project results; determining psychometric data associated with the at least one historical project team member, through sentiment analysis of at least one social networking source, wherein the psychometric data includes psychological characteristics and mental abilities of the at least one historical project team member wherein sentiment analysis includes identifying at least one of a positive, negative, and neutral sentiment from at least one of a post and a comment from the at least one social networking source, wherein the at least one social networking source includes at least one of a blog, a social networking site and a social interaction site; generating updated historical project data including, at least in part, adding psychometric data associated with the at least one historical project team member to the at least one profile included in the historical project data; receiving one or more new project requirements associated with a new project identifying a similarity between the one or more historical project requirements and the one or more new project requirements, including comparing the psychometric data of the at least one historical project team member to the one or more new project requirements; 2 Appeal2018-003223 Application 13/173,115 identifying an indication of success associated with the psychometric data included in the updated historical project data and with the one or more historical project requirements identified as similar to the one or more new project requirements; determining a set of modified project requirements for the new project based upon, at least in part, identifying the indication of success and the psychometric data associated with the at least one historical project team member determined through sentiment analysis; and determining a ranked list of various possible team compositions that are optimal for the one or more new project requirements based upon, at least in part, the psychometric data associated with the at least one historical project team member determined through sentiment analysis. Claims 7, 9, 12, 13, 15, 22, and 23 stand rejected under 35 U.S.C. Â§ 101 as directed to patent ineligible subject matter. Claims 7, 9, 12, 13, 15, 22, and 23 2 stand rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 3, 6, 18, and 19 of commonly-owned Application No. 13/440,307.3 2 Appellants do not present any substantive arguments with respect to the rejection of claims 7, 9, 12, 13, 15, 22, and 23 under the judicially created doctrine of obviousness-type double patenting. Thus, any such arguments are deemed to be waived. As a result, we summarily sustain the Examiner's obvious-type double patenting rejection. 3 An appeal for Application No. 13/440,307 was docketed as Appeal 2018-003016 on February 5, 2018. 3 Appeal2018-003223 Application 13/173,115 ANALYSIS We are persuaded by Appellants' arguments (Br. 17-18) that the Examiner has not satisfied the proper burden for making a prima facie case for patent ineligibility under 35 U.S.C. Â§ 101. With respect to independent claim 7, the Examiner determined that the operations claimed "when considered both individually and as a whole are directed to actions that facilitate receiving historical project data of a historical project team member to compose a team of members determined through sentiment analysis." (Final Act. 9.) In particular, the Examiner determined that claim 7 "effectively relate[ s] to collecting and comparing known information, which was deemed an abstract concept by the Courts (Classen) . .. similar to comparing new and stored information and using rules to identify options, which was also deemed an abstract concept by the courts (SmartGene)" (id.) and "effectively relate[s] to interpersonal and intrapersonal activities and manage transactions between people (buySAFE)" (id. at 10). We agree that the Examiner has not satisfied the proper burden for a prima facie case. 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 implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 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 4 Appeal2018-003223 Application 13/173,115 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)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 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 statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("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 5 Appeal2018-003223 Application 13/173,115 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 ( 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 Â§ 101. USPTO's 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: (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) (9th ed. 2019). 6 Appeal2018-003223 Application 13/173,115 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. Although the Examiner generally states that independent claim 7 "effectively relate[ s] to collecting and comparing known information" and "effectively relate[ s] to interpersonal and intrapersonal activities and manage[ ment] [ of] transactions between people" with citations to multiple Federal Circuit cases, these statements neither: (a) identify the specific limitations in the claims under examination that the Examiner believes recite an abstract idea; nor (b) demonstrate the identified limitations fall within the subject matter groupings of abstract ideas of mathematical concepts, certain methods of organizing human activity, or mental processes. See 84 Fed. Reg. at 56. In particular, the Examiner neither accounts for all the limitations recited in claim 7, nor adequately articulates why the claimed concepts are analogous to the facts of Classen, 4 SmartGene, 5 and buySAFE. 6 For example, the Examiner has not adequately addressed the limitation 4 Classen v. Immunotherapies, Inc. v. Biogen Idec, 659 F.3d 1057 (Fed. Cir. 2011). 5 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x. 950 (Fed. Cir. 2014). 6 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014). 7 Appeal2018-003223 Application 13/173,115 "determining psychometric data associated with the at least one historical project team member, through sentiment analysis of at least one social networking source ... wherein the at least one social networking source includes at least one of a blog, a social networking site and a social interaction site" ( emphasis added). Accordingly, we are persuaded by Appellants' arguments that "the Examiner has failed to establish a prim a facie case of unpatentability." (Br. 17-18.) Thus, we do not sustain the rejection of independent claim 7 under 3 5 U.S.C. Â§ 101. Claims 9 and 12 depend from independent claim 7. We do not sustain the rejection of claims 9 and 12 under 35 U.S.C. Â§ 101 for the same reasons discussed with respect to independent claim 7. Independent claims 13 and 22 recite limitations similar to those discussed with respect to independent claim 7. We do not sustain the rejection of claims 13 and 22, as well as dependent claims 15 and 23, for the same reasons discussed with respect to claim 7. DECISION The Examiner's decision rejecting claims 7, 9, 12, 13, 15, 22, and 23 under 35 U.S.C. Â§ 101 is reversed. The Examiner's decision rejecting claims 7, 9, 12, 13, 15, 22, and 23 under the judicially created doctrine of obviousness-type double patenting is affirmed. Because at least one rejection encompassing all claims on appeal is affirmed, the Examiner's decision is affirmed. 8 Appeal2018-003223 Application 13/173,115 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a)(l )(iv). AFFIRMED 9