Ex Parte Lulinski Grzybowski et al

Patent Trial and Appeal Board

Jan 30, 2017

13161873 (P.T.A.B. Jan. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
niro-3761 6343
EXAMINER
TORRICO-LOPEZ, ALAN
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
13/161,873 06/16/2011
74642 7590
CLIFFORD H. KRAFT
320 ROBIN HILL DR.
NAPERVTT.TE, IL 60540
Darice M. Lulinski Grzybowski
01/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARICE M. LULINSKI GRZYBOWSKI
and EDWARD C. STEWART
Appeal 2014—007093
Application 13/161,873
Technology Center 3600
Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Darice M. Lulinski Grzybowski and Edward C. Stewart (Appellants)
seek review under 35 U.S.C. § 134 of a final rejection of claims 1—9 and 11—
19, the only claims pending in the application on appeal. Appellants request
us to review only the rejection based on statutory subject matter under 35
1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed December 13, 2013) and the Examiner’s Answer (“Ans.,” mailed April
10, 2014), and Final Action (“Final Act.,” mailed July 18, 2013).
Appeal 2014-007093
Application 13/161,873
U.S.C. § 101. Br. 7. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented a web—based data collection and analysis
system that provides narrative and graphical interpretations of organization
practices and procedures as compared to industry best practices on both a
quantitative (objective) and qualitative (subjective) scale of measurement.
Specification 1: Field of the Invention.
An understanding of the invention can be derived from a reading of
exemplary claim 11, which is reproduced below (bracketed matter and some
paragraphing added).
11. A network—based method for data collection, analysis,
report generation and consulting comprising:
[1] storing a plurality of questions on a data storage device at a
server computer,
said server computer electrically connected to a network;
[2] supplying some of said plurality of questions over the
network
as signals to a client computer;
[3] receiving answers to these questions
at a network server remote from said client computer;
[4] storing said answers
in a database on a computer on the network ;
[5] scoring said answers
in three dimensions
to form a set of scores,
wherein said dimensions comprise
compliance with best practices,
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Application 13/161,873
financial or accounting standards,
and
operational indicators;
[6] providing a visual display
over said network
of at least some of said scores
on a computer remote from said server.
The Examiner relies upon the following prior art:
Bonnstetter US 5,551,880 Sept. 3, 1996
Davis US 2004/0172317 A1 Sept. 2, 2004
Munro US 2006/0143161 A1 June 29, 2006
Ciprino US 2007/0088589 A1 Apr. 19, 2007
Pellinat US 2007/0192785 A1 Aug. 16, 2007
Rafter US 2008/0270197 A1 Apr. 2, 2009
Odubiyi US 2009/0089126 A1 Apr. 2, 2009
Scanlon US 2009/0287547 A1 Nov. 19, 2009
Claims 1—9 and 11—19 stand rejected under 35 U.S.C. § 101 as directed
to non—statutory subject matter.
Claims 1, 2, 6, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Scanlon, Bonnstetter, Odubiyi, and Ciprino.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Scanlon, Bonnstetter, Odubiyi, Ciprino, and Davis.
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Application 13/161,873
Claims 4, 5, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Scanlon, Bonnstetter, Odubiyi, Ciprino, and Munro.
Claims 11 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Scanlon, Bonnstetter, and Odubiyi.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Scanlon, Bonnstetter, Odubiyi, and Pellinat.2
Claims 12, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Scanlon, Bonnstetter, Odubiyi, and Munro.
Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Scanlon, Rafter, Bonnstetter, Munro, and Odubiyi.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Scanlon, Rafter, Bonnstetter, Munro, Odubiyi, and Pellinat.
ISSUES
The issues of statutory subject matter turn primarily on whether
performing data analysis by a generic computer on a generic network is
more than telling a computer to perform such analysis.
2 Claim 9 is not rejected over art. This may be inadvertent, as its sole added
limitation is also part of claims 13 and 18 for which Pellinat is applied.
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ANALYSIS
Appellants request us to review only the rejection based on statutory
subject matter under 35 U.S.C. § 101. Br. 7. Thus the rejections under 35
U.S.C. § 103(a) are summarily affirmed.
As to the rejection based on statutory subject matter under 35 U.S.C.
§ 101, the Supreme Court
set forth 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. First, []
determine whether the claims at issue are directed to one of
those patent—ineligible concepts. [] If so, we then ask, “[wjhat
else is there in the claims before us?[] To answer that question,
[] 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. [The Court] described step two of this
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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S.Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent—ineligible concept.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
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The preamble to claims 1 and 11 recite that each is a method for data
collection, analysis, report generation and consulting. The seven steps in
claim 1 and the six steps in claim 11 result in scoring answers to questions.
The preamble to claim 17 recites that each is a system for determining
deviations from best practice by an organization. The three components
(excluding the recited questions, which are data entered) in claim 17 result in
scoring answers to questions. The Specification at 1 recites that the
invention relates to providing narrative and graphical interpretations of
organization practices and procedures. Thus, all this evidence shows that the
independent claims are directed to scoring questions for subsequent
interpretation, i.e. data analysis.
It follows from prior Supreme Court cases, and Bilski in particular, that
the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of data analysis is a fundamental commercial
and social practice long prevalent in our capitalist economy and democratic
society. The use of data analysis is also a building block of education and
reporting. Thus, data analysis, like hedging, is an “abstract idea” beyond the
scope of §101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of data
analysis at issue here. Both are squarely within the realm of “abstract ideas”
as the Court has used that term. See Alice Corp. Pty. Lid.at 2357.
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The remaining claims merely describe the nature of the questions and
answers and conventional display and access modalities. We conclude that
the claims at issue are directed to a patent—ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent—ineligible abstract idea into a patent—eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “to a particular technological environment.”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea[] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive and store data and assign weights and scores and
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arithmetic operations upon those weights and scores amounts to electronic
data query and retrieval and basic arithmetic algorithms — among the most
basic functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of scoring answers to questions as performed by a
generic computer. The method claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea of data analysis using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent—eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.”
Alice Corp. Pty. Ltd. at 2360.
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We are not persuaded by Appellants’ argument that “[wjithout the
modem fiber optic network known in the art as the Internet, along with
network servers and wireless network technology, it would be impossible to
supply the questions and receive the answers.” Br. 8—9. The independent
claims in particular recite only receiving data and scoring and weighting the
scores of that data. Appellants is contending that it is impossible to write
down numbers and multiply them on paper. This is unpersuasive. Instead,
at best, the argument is meant to mean that the network is needed to speed
up the process, but this is precisely the type of benefit provided by a generic
computer that Alice discounts.
Similarly, we are not persuaded by Appellants' argument that computers
are required to avoid taking years to perform the computations. Br. 10.
Aside from Alice speaking directly to such an argument, the claims do not
recite any minimum amount of input data. A population of fewer than ten
responses would likely be scored in less than ten minutes.
We are not persuaded by Appellants' argument that data is transformed.
Id. Again, this is the commonplace of generic computer operation.
We are not persuaded by Appellants' argument that physical hardware is
used. Br. 11. Again Alice explicitly counters this argument.
CONCLUSIONS OF LAW
The rejection of claims 1—9 and 11—19 under 35 U.S.C. § 101 as directed
to non—statutory subject matter is proper.
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The rejection of claims 1, 2, 6, and 8 under 35 U.S.C. § 103(a) as
unpatentable over Scanlon, Bonnstetter, Odubiyi, and Ciprino is proper.
The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over
Scanlon, Bonnstetter, Odubiyi, Ciprino, and Davis is proper.
The rejection of claims 4, 5, and 7 under 35 U.S.C. § 103(a) as
unpatentable over Scanlon, Bonnstetter, Odubiyi, Ciprino, and Munro is
proper.
The rejection of claims 11 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Scanlon, Bonnstetter, and Odubiyi is proper.
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Scanlon, Bonnstetter, Odubiyi, and Pellinat is proper.
The rejection of claims 12, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Scanlon, Bonnstetter, Odubiyi, and Munro is proper.
The rejection of claims 17 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Scanlon, Rafter, Bonnstetter, Munro, and Odubiyi is
proper.
The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over
Scanlon, Rafter, Bonnstetter, Munro, Odubiyi, and Pellinat is proper.
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DECISION
The rejection of claims 1—9 and 11—19 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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