Ex Parte KRISHNA

Patent Trials and Appeals Board

Jun 26, 2019

14225714 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/225,714 03/26/2014
106095 7590 06/28/2019
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
FIRST NAMED INVENTOR
Vikas KRISHNA
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.
063170.A019 1 9557
EXAMINER
RAYYAN, SUSANF
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIKAS KRISHNA
Appeal2018-007071
Application 14/225,7141
Technology Center 2100
Before: ALLEN R. MacDONALD, JEAN R. HOMERE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-21. App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant's Brief ("App. Br.") identifies CA, Inc. as the real party in
interest. App. Br. 3.
Appeal2018-007071
Application 14/225,714
CLAIMED SUBJECT MATTER
The claims are directed to a recommending collaborators based on
users' content collections. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
receiving a selected document from a user, the document
being a sample of a task that the user would like to find
collaborators for;
analyzing content of the selected document;
clustering the content of the selected document into a
plurality of skill axes that would be useful in view of the task;
determining a category of skill based on the content of the
selected document;
locating a plurality of collaborators by matching the
category of skill with a corresponding category of skill of a
potential collaborator selected from a plurality of potential
collaborators;
ranking the plurality of collaborators on the corresponding
category of skill; and
presenting the user with a ranked list of the plurality of
collaborators based on the ranking of the plurality of
collaborators.
App. Br. 19 (Claims Appendix).
REJECTIONS
Claims 1-21 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Ans. 16-23.2
2 The Examiner introduced the eligibility rejection in the Examiner's
Answer. Appellant did not seek to reopen prosecution, and instead argued
against the rejection in the Reply Brief.
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Claims 1-21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kang et al. (US 2015/0025928 Al, published Jan. 22,
2015) ("Kang") and Lambroschini (US 2015/0088567 Al, published Mar.
26, 2015) ("Lambroschini").
REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int'!, 573 U.S. 208 (2014). The Supreme Court
instructs us to "first determine whether the claims at issue are directed to a
patent-ineligible concept," Id. at 216-18, and, in this case, the inquiry
centers on whether the claims are directed to an abstract idea. If the initial
threshold is met, we then move to the second step, in which we "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. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step 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. (quoting Mayo, 566 U.S. at 72-
73).
The USPTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019
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Application 14/225,714
("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 MPEP § 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 is not
"well-understood, routine, conventional" in the field (see MPEP
§ 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 Memorandum, 84 Fed. Reg. at 52.
Examiner's Findings and Conclusion
In the first step of the Alice inquiry, the Examiner determines the
independent claims are directed to an abstract idea "of providing a ranked
list of collaborators based on matching the requisite skills of a user's selected
documents with the category skill of the potential collaborators." Ans. 16.
The Examiner further determines the claims are directed to an abstract idea
because "the claim does not require the method to be performed by a
computer" and "[t]he method could be performed by a human being
mentally or with pen and paper." Ans. 18.
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In Alice step 2, the Examiner finds "Claim 1 does not include
additional elements as each of the elements of claim 1 are part of the abstract
idea." Ans. 18.
Appellant's Contentions3
Appellant asserts error in the Examiner's step 1 analysis. Reply.
Br. 4. First, Appellant argues:
The Examiner's characterization of the claims omits the claim
elements realizing the technological improvements related to the
processing and transformation of a user-input documents to a
different output. In so doing, the Examiner improperly construes
the claims to a high level of abstraction. Claim 1 is directed to a
process for processing user-selected documents describing a task
wherein data captured and derived from the user-input document
is used to automatically determine and present the user with a
ranked list of potential collaborators based on the document
selected by the user. More specifically, Claim 1 is directed to a
technique and system where a user can select a document that
describes a task, input that document into the system, and the
system will extract data and process the document according to
the claimed technique to automatically output to the user a list of
potential collaborators, thereby transforming the data input
(sample task) to a different data output (ranked list of
collaborators), using a specific and unique technique.
Reply Br. 4.
3 Appellant's arguments all are directed to independent claim 1. Appellant
did not present separate arguments for independent claim 8 and independent
claim 15. As such, we treat claim 1 as representative, and our decision as to
claim 1 is dispositive of the rejections made under§ 101. 37 C.F.R.
§ 41.67(c)(l)(vii) ("When multiple claims subject to the same ground of
rejection are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the basis
of the selected claim alone.")
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Appellant also argues the Examiner's Alice step 2 findings are flawed
because:
[T]he rejected claims include several advances over the prior art,
as Appellant argued in its Appeal Brief, which are herein
incorporated by reference. And each of those advances are
directed to the implementation and application of the claimed
technique and system where a user can select a document that
describes a task, input that document into the system, and the
system will extract data and process the document according to
the claimed technique to automatically output to the user a list of
potential collaborators, thereby transforming the data input
(sample task) to a different data output (ranked list of
collaborators), not the alleged abstract idea.
Reply Br. 6.
Our Review
Applying the guidance set forth in the Memorandum, we are not
persuaded the Examiner has erred in rejecting the claims as being directed to
patent-ineligible subject matter. The Memorandum instructs us first to
determine whether any judicial exception to patent eligibility is recited in the
claim. The guidance identifies three judicially-excepted groupings: ( 1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices or managing personal behavior or
relationships or interactions between people, and (3) mental processes. We
focus here on the third grouping-mental processes.
A claim recites a mental process when the claim encompasses acts
people can perform using their minds or pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed.
Cir. 2011) ( determining that a claim whose "steps can be performed in the
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human mind, or by a human using a pen and paper" is directed to an
unpatentable mental process). This is true even if the claim recites that a
generic computer component performs the acts. See, e.g., Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) ("Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person's mind."); see also 2019 Eligibility Guidance 84 Fed.
Reg. at 52 n.14 ("If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.").
Claim 1 recites the following limitations: (1) "receiving a selected
document from a user, the document being a sample of a task that the user
would like to find collaborators for;" (2) "analyzing content of the selected
document;" (3) "clustering the content of the selected document into a
plurality of skill axes that would be useful in view of the task;"
(4) "determining a category of skill based on the content of the selected
document;" (5) "locating a plurality of collaborators by matching the
category of skill with a corresponding category of skill of a potential
collaborator selected from a plurality of potential collaborators;"
( 6) "ranking the plurality of collaborators on the corresponding category of
skill;" and (7) "presenting the user with a ranked list of the plurality of
collaborators based on the ranking of the plurality of collaborators." App.
Br. 19 (Claims Appendix).
These limitations, under their broadest reasonable interpretation,
recite steps which are an abstract mental process. More specifically, each of
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these limitations recites the operations that can be practically performed by a
person using their mind, or with the aid of pen and paper. For example,
limitation (1) which recites receiving a document that is a sample of a task,
could be performed simply by handing a person a piece of paper. Limitation
(2), which recites analyzing the received document is merely an evaluation
that is readily performed by a human in their mind. Limitation (3) which
recites clustering the content of the selected document into a plurality of
skill axes could also be performed by a human by organizing the content
either in their mind or by drawing clusters and skill axes on a piece of paper.
Limitation (4), which recites determining a category of skill based on the
document is an evaluation of the documents that also would be readily
performed mentally by a person. Limitations (5) and (6) which involve
identifying matching collaborators and ranking them are also readily
performed via observation and evaluation. Finally, limitation (7), which
recites presenting the user with a ranked list is easily performed using pen
and paper simply by writing the list down and showing it to the user.
Because each of these steps recites an operation which can be performed by
a human either mentally or with the aid of pen and paper, we conclude the
claims recite a judicial exception of a mental process, which is an abstract
idea.
Having determined that the claims recite a judicial exception, our
analysis under the Memorandum turns to (Step 2A, prong 2) determining
whether there are "additional elements that integrate the judicial exception
into a practical application." See MPEP § 2106.05(a)-(c), (e)-(h).
Appellant's claim 1 does not recite any additional elements, as each of the
elements of the claim recite a mental process. As such, we agree with the
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Examiner that "[ c ]laim 1 does not include additional elements as each of the
elements of claim 1 are part of the abstract idea." Ans. 18.4
The same analysis also applies under Step 2B in the Memorandum
(i.e., Alice step 2). Because claim 1 recites no additional elements that are
not part of the judicial exception, we agree with the Examiner that the claims
"not include additional elements that are sufficient to amount to significantly
more than the judicial exception." Ans. 17. Accordingly, we sustain the
rejection under 35 U.S.C. § 101.
REJECTION UNDER 35 U.S.C. § 103
"clustering the content ... into a plurality of skill axes"
The Examiner rejects the claims as unpatentable over the combined
teachings of Kang and Lambroschini. Final Act. 6-7. Claims 1 and 15 each
recite the limitation "clustering the content of the selected document into a
plurality of skill axes that would be useful in view of the task." The
Examiner relies on Lambroschini as teaching this limitation. Final Act. 7
( citing Lambroschini ,-J,-J 35, 36). The Examiner explains that the cited
4 Although we do not consider claims 8 and 15 separately, were we to do so,
our analysis would not change because they recite certain computer-related
limitations. The recitation of computer hardware or software, without any
additional detail of its structure or configuration, is not sufficient to integrate
the judicial exception into a practical application. See MPEP
§§ 2106.05(b)(I) ("It is important to note that a general purpose computer
that applies a judicial exception, such as an abstract idea, by use of
conventional computer functions does not qualify as a particular machine."),
2106.05(±) ("Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether the additional
elements amount to more than a recitation of the words 'apply it' ( or an
equivalent) or are more than mere instructions to implement an abstract idea
or other exception on a computer.").
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paragraphs in Lambroschini described the use of a new project input web
page having a selectable and hierarchical menu corresponding to a taxonomy
of candidate skills. Final Act. 7; see also Ans. 33-34.
Appellant contends the cited references do not teach or suggest this
limitation. More specifically, Appellant argues the cited portions of
Lambroschini "simply describes a web page that allows the user to specify
(through a hierarchical menu) required skills associated with a new project."
App. Br. 12. We agree that Lambroschini fails to teach or suggest the
argued limitation.
Lambroschini describes a system by which project needs and
candidate skills are matched to build a project team from a pool of
candidates. Lambroschini, Abstract. Lambroschini describes providing a
"project input web page [which] includes input field(s) for the user ... to
submit at least a name and a description of the new project." Lambroschini
,-J 35. Although Lambroschini describes organizing in hierarchical menus
required skills for a new project, those required skills are inputted by a user
using the hierarchical menus, and they are not obtained from a selected
document. See, e.g., Lambroschini ,-J 36 ( [T]he new project input web page
includes a selectable and hierarchical menu corresponding to a taxonomy
that facilitates submission by the user .. . of required skills associated with
the new project.")
Moreover, even if Lambroschini could be fairly characterized as using
a "selected document" to identify skills useful for performing the task, there
is no mention of clustering of any content, nor is there any teaching of
clustering the content "into a plurality of skill axes," as recited in claim 1.
The Examiner does not adequately explain how the use of hierarchical
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menus is the same as, or otherwise renders obvious, "clustering the content
of the selected document into a plurality of skill axes that would be useful in
view of the task." Without such an explanation, we agree with Appellant
that the Examiner has not shown the argued limitation to be obvious, and we
do not sustain the rejection of claim 1. For the same reason, we also do not
sustain the rejection of independent claim 15, which recites a similar
limitation. Claims 2-7 and 16-21 depend from claim 1 and claim 15,
respectively. Therefore, we also do not sustain the rejection of these
dependent claims. 5
"locating a plurality of collaborators . .. "
Appellant further argues the Examiner's rejection of claim 8 is in
error because Kang and Lambroschini fail to teach or suggest "locating a
plurality of collaborators by matching the category of skill with a
corresponding category of skill of a potential collaborator selected from a
plurality of collaborators." App. Br. 10-11. In rejecting claim 8, the
Examiner finds Kang teaches this limitation. Final Act. 6 ( citing Kang
,-J 32). More specifically, the Examiner finds that this limitation is rendered
obvious by Kang because Kang teaches that a "mapping may be used later
then matching individual skills ( e.g. the first set of skills) against the desired
skill ( e.g. the second set of skills) for the required task accomplishment." Id.
Appellant argues Kang is deficient because "[t]he 'mapping'
discussed in Kang refers to a 'skill dictionary' that 'includes synonym tables
to obtain the skill hierarchy"' and that "the 'skill dictionary' is maintained
5 Our determination with respect to the "clustering" limitation is dispositive
as to claims 1-7 and 15-21. Independent claim 8 does not recite the
"clustering" limitation. Therefore, we address Appellant's remaining
arguments as to claim 8 and its dependent claims below.
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'so that the common synonyms can be translated and mapped onto a desired
skill hierarchy."' App. Br. 11 ( citing Kang ,i 32). According to Appellant,
"Kang 's discussion of a skill dictionary to translate and map synonyms of a
desired skill hierarchy does not disclose, teach, or suggest 'locating a
plurality of collaborators by matching the category of skill of a potential
collaborator selected from a plurality of collaborators."' Id. We disagree.
Kang discloses "[a] method, a system, and a computer program
product for recommending one or more employees from a group of
employees for a task." Kang, Abstract. Kang further describes identifying
skills associated with each employee and matching those skills with those
needed to accomplish a task. See, e.g., Kang ,i 32 ("matching individual's
skills ( e.g., the first set of skills) against the desired skills ( e.g., the second
set of skills) for required task accomplishment"), see also Fig. 3 (steps 302,
304). We agree with the Examiner that this disclosure in Kang is sufficient
to render the argued limitation obvious. Appellant's argument seeks to
distinguish the claim based on Kang' s discussion of a skill dictionary, but
does not address Kang' s discussion of matching individual skills with those
required for task accomplishment. As such, we are not persuaded the
Examiner erred with respect to the limitation of "locating a plurality of
collaborators by matching the category of skill with a corresponding
category of skill of a potential collaborator selected from a plurality of
collaborators," as recited in claims 1, 8, and 15.
Reasons for Combining Kang and Lambroschini
In rejecting the claims under§ 103, the Examiner combines the
teachings of Kang and Lambroschini. Final Act. 7. The Examiner finds a
person of skill in the art would have modified Kang with the teachings of
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Lambroschini because Lambroschini recognized the benefit of "compar[ing]
various project teams for the new project to determine the optimal
combination of candidates." Id. ( citing Lambroschini ,i 59), and Kang
would further this goal.
Appellant challenges the Examiner's rationale for combining Kang
and Lambroschini. App. Br. 12. In particular, Appellant argues the
Examiner's rationale "is nothing more than a suggestion that the two
references are analogous art, i.e., that they are useful toward a common goal
or are in the same field of endeavor." Id. We disagree.
The standard for determining whether a claim is obvious is "an
expansive and flexible approach." KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
398, 415 (2007). Here, the Examiner has provided articulated reasoning
with a rational underpinning for the combination. KSR Int'! Co., 550 U.S. at
418. Appellant's argument points to no specific failing in the Examiner's
rationale for combining the references, and instead merely asserts that it is
insufficient. Accordingly, we are not persuaded the Examiner erred in
combining Kang and Lambroschini.
Dependent Claim 10,
Appellant argues separately for patentability of dependent claim 10.
App. Br. 13-16. We are persuaded by Appellant's argument. Claim 10
recites the limitation "the user content of each potential collaborator
comprises an entire body of documents created or edited by the potential
collaborator." App. Br. 19 (Claims Appendix). The Examiner relies upon
Kang for this limitation, but we agree with Appellant that Kang makes no
reference to any body of documents "created or edited by the potential
collaborator." Although Kang describes using certain documents to identify
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skills associated with employees, there is no indication that the documents
used by Kang are those "created or edited by the potential collaborator." As
such, we do not sustain the rejection of claim 10. Claims 11-13 depend
from claim 10. We also do not sustain their rejections for the same reasons.
DECISION
We reverse the Examiner's rejection of claims 1-7, 10-13, and 15-21
under 35 U.S.C. § 103.
We affirm the Examiner's rejection of claims 8, 9, and 14 under
35 U.S.C. § 103.
We affirm the Examiner's rejection of claims 1-21 under 35 U.S.C.
§ 101.
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision to reject the claims.
37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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