Ex Parte Menon et al

Patent Trial and Appeal Board

Jan 3, 2018

13007147 (P.T.A.B. Jan. 3, 2018)

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.
13/007,147 01/14/2011 Satish Menon 60201-0043 6033
29989 7590 01/05/2018
HTPKMAN PAT F.RMO RF.f’KFR R INGHAM T T P
EXAMINER
1 ALMADEN BOULEVARD HULL, JAMES B
FLOOR 12
SAN JOSE, CA 95113 ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
01/05/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATISH MENON, CATHERINE NEEDHAM,
WILLIE WHEELER, JAYAKUMAR MUTHUKUMARASAMY,
PARTHA SAHA, NITZAN KATZ, ADAM HONEA, MARLA KELSEY,
JORGE CARMARGO and MANISH UPENDRAN
Appeal 2016-006085
Application 13/007,1471
Technology Center 3700
Before JOHN C. KERINS, DANIEL S. SONG, and ANTHONY KNIGHT,
Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1, 6—9, 11, 13, 24, 29-32, 34, 36, 472, 49, and 51—
58. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Apollo Group, Inc.
Appeal Br. 1.
2 Claim 47 is not listed as rejected in the Final Office action but is listed in
the Brief and the Answer as being rejected.
Appeal 2016-006085
Application 13/007,147
CLAIMED SUBJECT MATTER
The claims are directed to “learning management systems [having]
platforms for individualized learning.” Spec. 12. Claims 1 and 24 are
independent. Claim 1 reproduced below, is illustrative of the claimed
subject matter:
1. A method, comprising:
maintaining profiles for a plurality of users, wherein the profile
maintained for each of the plurality of users describes a
plurality of attributes associated with the corresponding user
of the plurality of users;
wherein the step of maintaining profiles for the plurality of users
further includes:
storing, at one or more servers, for a first user of the plurality
of users, one or more database records associated with
the first user that, together, represent a profile for the first
user, wherein the one or more database records for the
first user include values for each attribute of the plurality
of attributes associated with the first user;
storing, at the one or more servers, for a second user of the
plurality of users, one or more database records
associated with the second user that, together, represent
a profile for the second user, wherein the one or more
database records for the second user include values for
each attribute of the plurality of attributes associated with
the second user;
storing, at the one or more servers, for a third user of the
plurality of users, one or more database records
associated with the third user that, together, represent a
profile for the third user, wherein the one or more
database records for the third user include values for each
attribute of the plurality of attributes associated with the
third user;
at a first point in time, making and storing at the one or more
servers, separate from the current profile of the second user,
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a profile snapshot of the profile of the second user, wherein
making a profile snapshot includes making a copy of the
current profile of the second user at the particular point in
time;
wherein, at the particular point in time, the profile snapshot for
the second user includes the same values, for each attribute
of the plurality of attributes, as the then-current profile of the
second user;
at a second point in time that is after the profile snapshot has been
made for the second user, changing values of one or more of
the plurality of attributes in the current profile of the second
user, as the second user participates in learning activities,
without changing any values of corresponding attributes in
the profile snapshot for the second user;
at a third point in time, making and storing at the one or more
servers, separate from the current profile of the third user, a
profile snapshot of the profile of the third user, wherein
making a profile snapshot includes making a copy of the
current profile of the third user at the particular point in time;
wherein, at the particular point in time, the profile snapshot for
the third user includes the same values, for each attribute of
the plurality of attributes, as the then-current profile of the
third user;
at a fourth point in time that is after the profile snapshot for the
third user has been made, changing values of one or more of
the plurality of attributes in the current profile of the third
user, as the third user participates in learning activities,
without changing any values of corresponding attributes in
the profile snapshot for the second user;
at a fifth point in time that is after the first, second, third, and
fourth points in time, generating a profile fingerprint based
at least in part on the profile snapshot for the first user and
the profile snapshot for the second user;
wherein the profile fingerprint includes at least one attribute
value that is based, at least in part, on attribute values from
each of the two or more profile snapshots that have changed
since the snapshots were created;
in response to a request for content for the first user:
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Application 13/007,147
comparing stored attributes associated with the first user’s
profile with the stored attributes that represent the profile
fingerprint;
determining that a similarity exists between the first user’s
profile and the profile fingerprint;
wherein the similarity is based at least in part on at least one
attribute value in the profile fingerprint;
selecting a first content item of a plurality of content items to
deliver to the first user, as a response to the request, based
at least in part on determining that said similarity exists;
wherein the method is performed by one or more computing
devices.
Appeal Br. 24—26 (Claims App.).
REJECTION
The Examiner made the following rejection:
Claims 1, 6—9, 11, 13, 24, 29-32, 34, 36, 47, 49, and 51—583 stand
rejected as being directed to patent-ineligible subject matter under the
judicial exception to 35 U.S.C. § 101.
OPINION
Section 101 of the patent law provides that one may obtain a patent
for “any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The
Supreme Court has held that this provision includes important exceptions,
notably those that prohibit one from patenting abstract ideas, laws of nature,
3 Claim 53 is drafted in dependent claim format but does not indicate the
claim from which it depends. Appellants filed a proposed amendment after
Final Action to correct this deficiency on August 31, 2015. This amendment
was not entered by the Examiner. Claims 54 depends from 53 and suffers
from the same issue. Nevertheless, the Examiner rejected claims 53 and 54.
Final Act. 2. We treat claims 53 and 54 in this decision as depending from
claim 1, as set forth in the August 31, 2015, amendment.
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or natural phenomena. Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct.
2347, 2354 (2014). Although a law of nature or an abstract idea is not
patentable, the application of these concepts may be patentable. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94
(2012). This area of law has evolved substantially over the past several
years.
In making the rejection, the Examiner finds that
the claimed invention is directed to non-statutory subject matter
because the claims as a whole, considering all claim elements
both individually and in combination, do not amount to
significantly more than an abstract idea. Although the claims
recite a statutory class (i.e., method and system) (STEP 1: YES),
the claims are also directed to the abstract idea of dynamically
recommending learning content to a user by maintaining profiles
for a plurality of users, generating a profile fingerprint including
at least one attribute value of two or more profiles, and in
response to a request for content, determining a similarity exists
between the user’s profile and the profile fingerprint, said
similarity based on the at least one attribute value in the profile
fingerprint. Recommending learning content based on user
attributes is a long-practiced concept in the educational arts, and
is considered a form of organizing human behavior that would
otherwise be performed by a teacher, which has been found to be
an abstract idea by the courts.
Final Act. 2.
As an initial matter, the Appellants assert that the Examiner did not
follow the USPTO guidelines as to subject matter eligibility. App. Br. 7—12.
However, any failure by the Examiner to follow the Director’s guidance is
appealable only to the extent that the Examiner has failed to follow the
statutes or case law. That is, to the extent the Director’s guidance is more
restrictive on the Examiner than the statutes or the case law, failure of the
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Examiner to follow those added restrictions is a matter for petition to the
Director. In deciding this Appeal, we apply the framework as set forth by
the Supreme Court in Mayo and Alice. According to the Mayo and Alice
framework, to determine whether an invention claims ineligible subject
matter, we apply the two-step test of Mayo, id. at 1296—97, which has been
further explained in Alice, 134 S. Ct. at 2355. First, we determine whether
the claims at issue are directed to a patent-ineligible concept such as an
abstract idea. Id. Second, we “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.” Id.
at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1298).
The Federal Circuit has described the first step as a determination of
the “basic character of the [claimed] subject matter.” Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (citing
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266,
1273—74 (Fed. Cir. 2012)). The Federal Circuit has also indicated that this
step should determine whether a claimed method “recites an abstraction —
an idea, having no particular concrete or tangible form.” Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see also Alice, 134 S. Ct.
at 2355 (“The ‘abstract ideas’ category embodies ‘the longstanding rule that
‘[a]n idea of itself is not patentable.”” (quoting Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (further quotations and citations omitted)).
We now consider step 1 of the Alice analysis. The Examiner finds
that the method of claim 1 involving “[rjecommending learning content
based on user attributes is a long-practiced concept in the educational arts,
and is considered a form of organizing human behavior that would otherwise
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be performed by a teacher” and determines that this method is directed to an
abstract idea. Final Act. 2. See also Ans. 2—3. (“For example, a teacher
could perform these steps manually either mentally or using pen and paper
using paper files to store information, compare stored information, and make
a determination of which learning content to provide a student.”).
The Appellants disagree, arguing that according to the 2014 Updated
Guidelines4, “the Asserted Abstract Idea must ‘ensure that a claimed concept
is not identified as an abstract idea unless it is similar to at least one concept
that the courts have identified as an abstract idea.’” Appeal Br. 8; Reply Br.
4. Further, Appellants argue that “the Examiner fails to explain why the
identified idea qualifies as an exception to patentability under section 101.”
Appeal Br. 8, 9; Reply Br. 6. Appellants argue that “(1) not all methods of
organizing human activity are abstract ideas” and “(2) this category
[organizing human activity] description is not meant to cover human
operation of machines.” Appeal Br. 8. Furthermore, Appellants argue that
“an ‘instantiated’ idea (i.e., a concrete/ example/ instantiation/
implementation of an idea) is not covered by this category.” Id.
In sum, Appellants’ view is that the Examiner has not established a
prima facie case {id. at 9) and further, the claimed method does not describe
an abstract concept, or a concept similar to those found by the courts to be
abstract, such as a fundamental economic practice, a method of organizing
human activities, an idea itself standing alone, or a mathematical
relationship. Id. Appeal Br. 8; Reply Br. 4. Finally, Appellants argue that
4 2014 Interim Guidance on Patent Subject Matter Eligibility (79 Fed. Reg.
74618—33; Tuesday, December 16, 2014/Notices) (hereinafter “2014
Updated Guidelines”).
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“the Examiner makes no effort to determine what features of the claims are
directed towards the Alleged Abstract Idea.” Appeal Br. 9 (emphasis
omitted); Reply Br. 2, 4.
We are not persuaded that the Examiner failed to identify the abstract
idea. As stated supra, the Examiner finds that “[rjecommending learning
content based on user attributes is a long-practiced concept in the
educational arts, and is considered a form of organizing human behavior that
would otherwise be performed by a teacher” is the abstract idea. Final Act.
2. Furthermore, citing cases showing similar concepts that were previously
found abstract by the courts is one way to show that the claims of an
application are abstract. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016):
[A] search for a single test or definition in the decided
cases concerning § 101 from this court, and indeed from the
Supreme Court, reveals that at present there is no such single,
succinct, usable definition or test [for, what an ‘abstract idea’
encompasses].
In this regard, the Examiner states that “Content Extraction &
Transmission v. Wells Fargo Bank. N.A. recognized that collecting data,
recognizing certain data within the collected data set, and storing that
recognized data in a memory is an abstract idea (776 F.3d 1343 (Fed. Cir.
2014)).” Final Act. 2—3. The Examiner further finds that “[t]he limitations
directed to storing profile information, making and storing snapshot and
fingerprint information, and comparing said information is similar to the
concept found to be an abstract idea in Content Extraction & Transmission.”
Id. at 3. Appellants do not address the Examiner’s case law comparison.
See 37 C.F.R. § 41.37(c)(l)(iv) (“The arguments shall explain why the
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examiner erred as to each ground of rejection contested by appellant.”); see
also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“An appellant may attempt to overcome an examiner’s obviousness
rejection on appeal to the Board by submitting arguments and/or evidence to
show that the examiner made an error.”). Thus, we are not apprised of error
in the Examiner’s finding that the claims contain an abstract idea based upon
a comparison of the claims to case law, and we agree with the Examiner’s
finding.
Further, Appellants’ argument that the invention is limited to a
particular technology (Appeal Br. 8) does not show error in the Examiner’s
rejection. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1371 (Fed. Cir. 2011) (“The Court [Parker v. Flook, 437 U.S. 584 (1978)]
rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable.”); cfMayo, 132 S. Ct.
at 1298 (“Purely ‘conventional or obvious’ ‘[pre]-solution activity’ is
normally not sufficient to transform an unpatentable law of nature into a
patent-eligible application of such a law.” (alteration in original) (quoting
Parker, 437 U.S. at 590)). Like the Flook claims, claim 1 does not recite
either unconventional physical elements or a functional relationship between
an abstract idea and the physical elements.
Next, moving to step 2 of the Alice analysis, Appellants contend that
“any situation in which a claim is held to satisfy the inventiveness standard
of section 103 and fail the inventiveness standard of section 101 is clearly
erroneous.” Appeal Br. 12—14; Reply Br. 9. Although the second step in the
Alice!Mayo analysis includes a search for an inventive concept, the analysis
is not an evaluation of novelty or nonobviousness, but rather, a search for
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“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, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
Ct. at 1294). A novel and nonobvious claim directed to a purely abstract
idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Further, “under the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility.” Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016).
Appellants further contend that “[w]ith respect to ‘significantly more’,
the issue is not whether the hardware is doing something beyond its inherent
capabilities. The issue is whether there is something inventive about the
actions, recited in the claims.” Appeal Br. 15—16; Reply Br. 8. Appellants’
argument does not explain how the actions of the claimed invention amount
to significantly more than the abstract idea. Unlike the claims at issue in
cases such as DDR Holdings LLC v Hotelscom LP, 773 F.3d 1245, 1257
(Fed. Cir. 2014) (claims at issue are “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks”) and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1339 (Fed. Cir. 2016) (claims at issue are “directed to a specific
implementation of a solution to a problem in the software arts”), Appellants
merely address the issue of teaching through the use of generic, computer-
related recitations that do not add meaningful limitations to steps otherwise
directed to an abstract idea.
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Contrary to Appellants’ contention, we do not find that the claims
have limitations that required the hardware to preform actions, under
program control, that were inventive. Appeal Br. 15. Appellants refer to
Diamond v. Diehr, 450 U.S. 175 (1981) in support of this argument. The
Supreme Court, in Diehr, found those claims eligible because they
“involve[d] the transformation of an article, . . . raw, uncured synthetic
rubber, into a different state or thing” and “describe[d] in detail a step-by-
step method for accomplishing such, beginning with the loading of a mold
with raw, uncured rubber and ending with the eventual opening of the press
at the conclusion of the cure.” Diehr at 184. Because Appellants’ claims
are not directed to a transformation of an article, Diehr is inapposite.
Contrary to Appellants’ contention that the claims add unconventional
steps that confine the claim to a particular useful application (Appeal Br.
18), as noted supra, we conclude the claims stop short of requiring
significantly more than the abstract idea. Appellant’s claims are not similar
to the claims in Enfish, which relate to software that was determined to be
patent-eligible subject matter because the software was found to improve
computer functionality. Although, McRO, Inc. v. Bandai Namco Games
America Inc. 837 F.3d 1299 (Fed Cir. 2017)5 makes mention of the use of
“unconventional rules,” in claims determined to be directed to patent-
eligible subject matter, it does so in the context of claims requiring an
ordered combination of steps in relating sub-sequences of phonemes,
5 We also note that the claimed invention in McRO relates to data processing
involving automating an animation method and does not relate to a method
of organizing human behavior. See McRO, 837 F.3d at 1307—08, 1314.
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timings, and morph weight sets. McRO, 837 F.3d at 1303. We decline to
extend McRO’s reach to purported unconventional rules present in claim 1.
Appellants submit that adding “a specific limitation other than what
is well-understood, routine and conventional in the field, or adding
unconventional steps that confine the claim to a particular useful
application” adds “significantly more” to the claims. Appeal Br. 17
(emphasis omitted.); Reply Br 6, 7. Appellants have neither shown, nor
provided evidence, that the claimed steps using the operative terms
“maintains”, “stores”, “changes values”, “generates”, “compares”,
“determines”, and “selects” are technically accomplished such that they are
not routine, conventional functions that would not or cannot be
accomplished by a teacher. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716 (Fed. Cir. 2014) (quoting Alice Corp. v. CLS Bank Inti, 134 S. Ct.
2347, 2357 (2014)) (“Instead, the claimed sequence of steps comprises only
‘conventional steps, specified at a high level of generality,’ which is
insufficient to supply an ‘inventive concept’”); BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)
(“An abstract idea on ‘an Internet computer network’ or on a generic
computer is still an abstract idea”); Alice Corp. v. CLS Bank Int’l, 134 S. Ct.
2347, 2358 (2014) (“the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention”;
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(quotation omitted) (“We have repeatedly held that such invocations of
computers and networks that are not even arguably inventive are insufficient
to pass the test of an inventive concept in the application of an abstract
idea”); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
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1332, 1341 (Fed. Cir. 2017) (“Rather, the claims recite both a generic
computer element—a processor—and a series of generic computer
‘components’ that merely restate their individual functions—i.e., organizing,
mapping, identifying, defining, detecting, and modifying. That is to say,
they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two”); Intellectual
Ventures, 792 F.3d at 1370 (“[T]he ‘interactive interface’ simply describes a
generic web server with attendant software, tasked with providing web pages
to and communicating with the user’s computer”).
Moreover, the use of student progress in a subject as a source for
recommending the next course of study appears to be a “‘well-understood,
routine, conventional activity’ previously known to the industry.” Content
Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347—
48 (Fed. Cir. 2014) (quoting Mayo, 132 S. Ct. at 1294). “[Sjimply
appending conventional steps specified at a high level of generality, to laws
of nature, natural phenomena, and abstract ideas cannot make those laws,
phenomena, and ideas patentable.” Mayo, 132 S. Ct. at 1300. None of the
limitations of the claims, viewed “both individually and as an ordered
combination,” transform the nature of the claims into patent-eligible subject
matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
For claims 7—9, 24, 29—32, 47, 49, 53, and 54, Appellants rely upon
the same arguments presented for claim 1. Appeal Br. 7—18. Accordingly,
for the reasons set forth supra with respect to claim 1, Appellants have not
shown error in the Examiner’s rejection. Thus, the rejection of claims 7—9,
24, 29-32, 47, 49, 53, and 54 is sustained.
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With respect to claims 6, 11, 13, 34, 36, 51, 52, and 55—58, Appellants
argue that the “[ujnaddressed Limitations include additional features
qualifying as ‘significantly more’ because they recite ‘unconventional steps
that confine the claim to a particular useful application.’” Appeal Br. 18—19.
We have reviewed the limitations and similarly find, “[n]one of the
limitations of the claims, viewed “both individually and as an ordered
combination,” transform the nature of the claims into patent-eligible subject
matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
DECISION
The Examiner’s decision to reject claims 1, 6—9, 11, 13, 24, 29-32,
34, 36, 47, 49, and 51—58 under 35 U.S.C. § 101 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).
AFFIRMED
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