Ex Parte Macbeth et al

Patent Trial and Appeal Board

Jun 29, 2017

11426830 (P.T.A.B. Jun. 29, 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.
11/426,830 06/27/2006 Steven W. Macbeth 315862.01/MFCP. 149695 1528
45809 7590 07/03/2017
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/03/2017 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
usdocket@ micro soft .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. MACBETH, ROLAND L. FERNANDEZ,
BRIAN R. MEYERS, DESNEY S. TAN, GEORGE G. ROBERTSON,
NURIA M. OLIVER, OSCAR E. MURILLO, ELIN R. PEDERSEN,
MARY P. CZERWINSKI, and JEANINE E. SPENCE
Appeal 2016-008634
Application 11/426,830
Technology Center 3600
Before JOHN A. EVANS, HUNG H. BUI, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008634
Application 11/426,830
STATEMENT OF THE CASE
Appellants1 2 3appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—9, 11—17, and 21—24. App. Br. 5.2,3 Claims 10 and
18—20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm
THE INVENTION
According to Appellants, the purpose of the invention is to help users
achieve personal or work goals and become more effective at performing
tasks. Abstract. The invention monitors activities and provides feedback
based on parameters such as task-avoidance behavior. Id.
Claim 1 is reproduced below:
1. A method that facilitates detecting user task avoidance
behavior, comprising:
monitoring, through a first computing process, user
activities, wherein the user activities are actions performed by a
user through a computing device;
receiving, through a second computing process, a defined
goal from the user;
determining, through a third computing process, a
workflow, which comprises user activities, for completing the
1 Appellants identify the real party in interest as Microsoft Technology
Licensing, LLC. App. Br. 3.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed April 23, 2015, (2) the Appeal Brief (“App. Br.”) filed December 28,
2015, (3) the Examiner’s Answer (“Ans.”) mailed July 20, 2016, and (4) the
Reply Brief (“Reply Br.”) filed September 20, 2016.
3 Appellants filed a second Appeal Brief on December 28, 2015
electronically that we consider as a supplement to the brief filed by mail.
Accordingly, the page numbers in this opinion correspond to the
electronically filed brief.
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defined goal using historical analysis of user activities associated
with previous attempts to complete the defined goal;
providing, through a fourth computing process, a feedback
based at least in part on the user activity, wherein the feedback
provides information regarding what activities the user has
performed and a recommended activity from the workflow to
facilitate achievement of the defined goal:
assigning, through a fifth computing process, an
importance rank to the user activities in the workflow using an
automatic classifier process; and
detecting, through a sixth computing process, an
avoidance of an activity that is part of the workflow, wherein the
avoidance of an activity is detected when tasks with a lower
importance ranking are completed prior to tasks with a higher
importance ranking, and wherein the first, second, third, fourth,
fifth, and sixth computing processes are performed on one or
more computing devices.
THE REJECTION
Claims 1—9, 11—17, and 21—24 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter. Final Act. 3^44; Ans. 5—6.
ANALYSIS
Independent claims 1, 12, and 21
Regarding claims 1,12, and 21, the Examiner has rejected these
claims under 35 U.S.C. § 101 because the claims as a whole (1) are directed
to an “abstract idea” and (2) do not contain an “inventive concept” sufficient
to transform the claimed “abstract idea” into a patent-eligible application.
4 The Examiner has withdrawn the rejection of claims 21—24 as covering
non-statutory, transitory signals. Ans. 2. Claims 21—24, however, stand
rejected under the Examiner’s abstract-idea rationale. Id. at 5—6.
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Final Act. 3^4. For the reasons discussed below, Appellants have not
persuaded us of error.
I
The Supreme Court’s two-step framework guides our analysis. Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). According
to step one, “[w]e must first determine whether the claims at issue are
directed to a patent-ineligible concept,” such as an abstract idea. Id.
Appellants argue that claims 1,12, and 21 are not directed to an
abstract idea. App. Br. 13—15. According to Appellants, the claims recite
more than “monitoring user activities and providing feedback based on said
activities,” and thus, are not directed to this abstract idea on the face of the
claims. Id. at 14. In Appellants’ view, the Examiner’s characterization is
overly broad and ignores specific features of the claims that go well beyond
monitoring and providing feedback. Id. at 14—15.
We disagree.
Step one of the Alice framework “calls upon us to look at the ‘focus of
the claimed advance over the prior art’ to determine if the claim’s ‘character
as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex. v.
DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). In contrast to
Appellants’ discussion of the invention, which largely restates the claims
(see App. Br. 13—15), the Examiner’s discussion better captures the claimed
advance over the prior art and the claim’s character as a whole (see Final
Act. 3^4; Ans. 5—6). Moreover, the Examiner’s characterization is
consistent with the Specification’s description of the problem and solution.
In particular, the Specification explains that Appellants’ system is
based on the user’s ability to use a computer as a tool to complete some real-
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world activity. Spec. 171. For example, the system can help users be more
effective at their jobs or balance life goals. Id. 126. The Specification
explains that, “historically, a user would outline and prioritize the steps or
actions necessary to complete a particular activity mentally before starting to
work on that activity on the computer.” Id. 171. To help the user,
Appellants propose using a computer to monitor activities and provide
feedback instead of having the user organize and prioritize the steps
mentally. Id. H 27—28, 71. Given this problem and solution, the character
of the claim as a whole, and the heart of the invention, lies in monitoring
activities and providing feedback. This activity is similar to longstanding
conduct—i.e., mentally outlining and prioritizing steps (id. 171)—that
existed long before computers.
Moreover, the idea here is similar to tailoring content based on
customer information, which the Federal Circuit recognized as a long-
prevalent, fundamental practice and an abstract idea. Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 2015).
In Intellectual Ventures /, the claim involved an interface that provided
content based on a user’s navigation history and information known about
the user. Id. Notably, the solution to the problem here similarly involves
monitoring the user’s activity to present information based on that activity.
Spec. H27—28, 71. Similar to the steps of detecting and ranking recited in
Appellants’ claims, the Federal Circuit has also recognized that “[t]he
concept of data collection, recognition, and storage is undisputedly well-
known,” and “humans have always performed these functions.” Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014). In light of these precedents, we agree with the
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Examiner that claims 1,12, and 21 are “directed to” an abstract idea. See
Final Act. 4 (similarly discussing storing and organizing information).
Appellants argue that the Examiner’s prima facie case of patent
ineligibility is inadequate. App. Br. 11—13. We are unpersuaded. Contrary
to Appellants’ argument (id. at 12), the Examiner does not merely conclude
that the claim is directed to an abstract idea. Rather, by identifying the
abstract idea and explaining that the claims are directed to concepts found by
the courts to be abstract (Final Act. 4), the Examiner has provided a rationale
that identifies the abstract idea recited in the claim and why it is considered
an exception. Accord United States Patent and Trademark Office, July 2015
Update: Subject Matter Eligibility (July 30, 2015), pp. 6—7,
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf.
On this record, we are unpersuaded that the Examiner erred in
concluding that claims 1 and 10 are directed to an abstract idea.
II
Because the claims are “directed to an abstract idea,” we analyze the
claims to determine if the limitations, when considered both “individually
and as an ordered combination” contain an “inventive concept” sufficient to
transform the claimed “abstract idea” into a patent-eligible application.
Alice, 134 S. Ct. at 2355-58.
Appellants argue that claims 1, 12, and 21 amount to significantly
more than the abstract idea, and are therefore, patent eligible. App. Br. 15—
18, 20-22, 24—27. In Appellants’ view, the assigning and detecting steps are
not known in the art and add “something more” that causes the claims to be
confined to a particular useful application. Id. at 17—18, 22, 25—26.
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“[A] claim for a new abstract idea is still an abstract idea.” Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). So,
although Appellants point to § 102 novelty to support their argument here
(App. Br. 17—18, 22, 25—26), “[t]he search for a § 101 inventive concept is
thus distinct from demonstrating § 102 novelty.” Id. Here, the question in
step two of the Alice framework is not whether an additional feature is novel
under § 102 but whether the implementation of the abstract idea on a
computer involves “more than performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry.’” Content
Extraction, 776 F.3d at 1347-48 (quoting Alice, 134 S. Ct. at 2359).
Regarding the recited assigning an importance rank, Appellants note
that, historically, a user would prioritize steps mentally before starting work
on a computer. Spec. 171. Instead of claiming a specific way that the
computer carries out this step, claims 1,12, and 21 merely limit this mental
activity to a generic computer environment using an automatic classifier
process. In fact, according to the Specification, the invention works with
conventional classifiers previously known to the industry such as support
vector machines (SVM), supervised learning, Bayesian networks, among
many others. Id. H 53—55. That is, the claims are not limited to a particular
improvement to classification, but rather, the assigning step broadly covers
the conventional use of any of these previously known classifiers to assist
the user’s prioritization.
Likewise, the activity-avoidance detection, recited in claims 1 and 21,
occurs when “tasks with a lower importance ranking are completed prior to
tasks with a higher importance ranking.” This, however, is not a novel
technical solution or a specific challenge unique to computers. Rather, the
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computer in this step is used to compare two pieces of data, which is a
conventional use of a computer. That is, unlike the improvement to three-
dimensional animation in McRO, Inc. v. Bandai Namco Games Am., 837
F.3d 1299, 1315 (Fed. Cir. 2016), discussed in Reply Br. 2—5, Appellants do
not introduce a technical advance or improvement. Accord Ans. 4. Instead,
the claims here are more like those that abstractly cover results where “it
matters not by what process or machinery the result is accomplished.”
McRO, 837 F.3d. at 1312 (quoting O Reilly v. Morse, 56 U.S. 62, 113
(1854)). On this record, Appellants have not shown that the assigning and
detecting steps transform the abstract idea into patent-eligible subject matter.
See id. at 17—18, 22, 25—26.
Appellants argue that the claimed method does not pre-empt other
methods of identifying work avoidance. App. Br. 18, 22, 26; Reply Br. 2—5.
Claims 1 and 12, however, merely recite generic computing components
used in a conventional way. According to the Specification, the invention
does not require any particular computer system but can be performed on
many different types of systems: “single-processor or multiprocessor
computer systems, minicomputers, mainframe computers, as well as
personal computers, hand-held computing devices, microprocessor-based or
programmable consumer electronics, and the like, each of which can be
operatively coupled to one or more associated devices.” Spec. 1 85. Apart
from reciting that the method is performed through a first computing
process, claims 1 and 12 lack a specific technical way of selecting a device.
Accordingly, claims 1 and 12, as a whole, broadly preempt methods of
identifying work avoidance.
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Claim 21 merely limits the method of claim 1 to a particular
technological environment. Specifically, claim 21 recites “a processor” and
“computer storage memory,” which are well-known and conventional
components, configured to carry out a method similar to the one recited in
claim 1. Essentially, claim 21 recites an abstract idea “while adding the
words ‘apply it with a computer.’” Alice, 134 S. Ct. at 2358.
We agree with the Examiner that the generic computer components
recited in claims 1,12 and 21 do not transform the claims’ nature such that
the claims, as a whole, recite an “inventive concept.” Final Act. 4.
Therefore, Appellants have not persuaded us of error in the rejection
under 35 U.S.C. § 101 of independent claims 1, 12, and 21.
The Dependent Claims
Appellants’ arguments for claims 2—9, 11, 13—17, and 22—24 raise the
same issues as those that we have addressed in discussing claims 1, 12, and
21 above. See App. Br. 11—27; Reply Br. 2—6. Accordingly, we find those
arguments unpersuasive for the reasons previously discussed. We further
explain below how those reasons apply to the dependent claims.
Additionally, Appellants argue that the Examiner has given no
consideration whatsoever to these dependent claims. App. Br. 12. We
disagree. This is not a case where the “rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(internal citations and quotation marks omitted). Rather, here the Examiner
finds that the claims do not provide meaningful limitations to transform the
abstract idea that amount to significantly more than the judicial exception
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(see Final Act. 4)—a finding that is articulated in the rejection and,
therefore, subject to rebuttal.
For each dependent claim, Appellants argue that each additionally
recited feature (1) further differentiates the invention from the abstract idea
identified by the office and adds another element that is something more
than an abstract idea, or (2) identify alternative solutions to the problem. See
App. Br. 18—20, 22—23, 26—27. Essentially, in each case, Appellants’
argument is directed to the specificity of the claimed invention and the
absence of complete preemption. See id.
“While 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). Nevertheless, for the reasons similar to those discussed above, the
dependent claims here implicate preemption concerns.
Specifically, claims 2—5, 8, 13—17, and 22—24 only further limit the
data operated on by the method—i.e., limiting the type of profile
information, feedback, recommendation, or activity. But limiting the claims
to a particular data type does not remedy the concerns discussed in
connection with the independent claims. Rather, the recited data merely
limits the abstract idea to a particular technical environment, which is not
significantly more, as discussed above. See Alice, 134 S. Ct. at 2358.
Claim 7 involves another comparison of data, which implicates the
same issues as the activity-avoidance detection, as discussed above.
Claims 9 and 11 merely report a result—information about task
reacquisition and goal reminder—which is a well-known function of
computers.
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And notably, claim 6 does not contain any further limitations on the
method recited in the parent claim. We leave the issue of whether claim 6
should be further rejected for this reason to the Examiner.
On this record, we agree with the Examiner that the generic computer
components recited in claims 2—9, 11, 13—17, and 22—24 do not transform
the claim’s nature such that the claims, as a whole, recite an inventive
concept. Final Act. 4.
Therefore, Appellants have not persuaded us of error in the rejection
under 35 U.S.C. § 101 of claims 2—9, 11, 13—17, and 22—24.
DECISION
We affirm the Examiner’s rejection of claims 1—9, 11—17, and 21—24.
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
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