Ex Parte Obeid

Patent Trial and Appeal Board

Nov 27, 2018

13659791 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/659,791 10/24/2012
76405 7590
Kenneth P. Waszkiewicz
Attorney at Law
29 Murray A venue
Annapolis, MD 21401
11/29/2018
FIRST NAMED INVENTOR
Diya B. Obeid
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.
06-003-US2 3053
EXAMINER
DENNISON, JERRY B
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
11/29/2018 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):
ken+docketing@waszkiewiczlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIY A B. OBEID
Appeal2018-003794
Application 13/659,791 1
Technology Center 2400
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-22, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to the Appeal Brief, the real party in interest is JOBDIV A, INC.
App. Br. 3.
Appeal2018-003794
Application 13/659,791
STATEMENT OF THE CASE
Introduction
Appellant's application relates to creating a social network among
resume owners by parsing resumes and identifying a shared network
identifier. See Spec. ,r 64. For example, an overlap in time of employment
of people by the same employer will lead to creating a network identified by
that employer for that time period. See Spec. ,r,r 40-48. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method implemented on a server computer system,
compnsmg:
rece1vmg a resume for a resume owner, wherein the
resume is a narrative that describes the resume owner's
background and experiences, wherein the resume owner is a
candidate for employment, wherein the resume includes content,
wherein the content comprises skill or experience-related
phrases, and wherein the skill or experience-related phrases
include at least one entity;
robotically parsing the resume to:
obtain an identity of the resume owner;
obtain a network identifier for each said at least one
entity in the resume; and
determine a time period of a relationship between
the resume owner and each said at least one entity by
examining a contextual use of said at least one entity in the
resume, the time period having a start time and an end
time;
creating a parsed resume that includes the identity of the
resume owner in the resume, the network identifier for each said
at least one entity in the resume, and the time period in the
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Application 13/659,791
resume of the relationship between the resume owner and each
said at least one entity;
identifying the network identifier for each said at least one
entity in the resume that is a shared network identifier, wherein
the time period of the relationship between the resume owner and
said at least one entity associated with the shared network
identifier overlaps with a known time period of a known
relationship between another resume owner and said at least one
entity associated with the shared network identifier; and
creating a social network for the shared network identifier,
wherein members of the social network include the resume
owner and the other resume owner.
The Examiner's Rejections
Claims 1-22 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. 2
Claims 1--4, 6-9, 11-14, 16-20, and 22 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over McGovern (US 2009/0228297 Al; Sept.
10, 2009), Ehrlich (US 2008/0208671 Al; Aug. 28, 2008), and Blue (US
2007 /0245245 Al; Oct. 18, 2007).
Claims 5, 10, 15, and 21 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over McGovern, Ehrlich, Blue, and Work (US 8,010,460
B2; Aug. 30, 2011).
2 The Examiner entered a new ground of rejection under§ 101 in the
Answer with the approval of the Technology Center Director. Ans. 3, 12.
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Application 13/659,791
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues all the rejected claims together as a single group.
See Reply Br. 2-11. We select independent claim 1 as representative of all
claims in our analysis below. See 37 C.F.R. § 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S.Ct. at 2355.
First, assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, we
must "determine whether the claims at issue are directed to one of those
patent-ineligible concepts." Id. For example, abstract ideas include, but are
not limited to, fundamental economic practices, methods of organizing
human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 2355-57.
Second, if the claim is directed to a judicial exception, such as an
abstract idea, we must determine whether additional elements in the claim
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"'transform the nature of the claim' into a patent-eligible application." Id. at
2355 (quoting Mayo, 566 U.S. at 78). This second step is described as "a
search for an "'inventive concept"'-i.e., an element or combination of
elements that is ' ... significantly more than ... the [ineligible concept]
itself."' Id. at 2355 (alteration in original) ( quoting Mayo, 566 U.S. at 72-
73).
Alice Step One
"The first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016). "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting
O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We therefore look
to whether the claims ... focus on a specific means or method that improves
the relevant technology or are instead directed to a result or effect that itself
is the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
The Examiner finds claim 1 is directed to the abstract idea of
"grouping people according to previous work history from their resume[s],"
which falls into the category of certain methods of organizing human
activity. Ans. 4. Appellant contends the Examiner's concept of the claims
is an over-generalization of the claimed subject matter. Reply Br. 4--5.
Specifically, Appellant argues the Examiner's concept ignores that the
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claims recite parsing resumes to identify an "entity" and "skill or
experience-related phrases." Id. We are not persuaded by Appellant's
argument.
"[A] claim is not patent eligible merely because it applies an abstract
idea in a narrow way." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281
(Fed. Cir. 2018). Rather, we look "at the 'focus' of the claims, their
'character as a whole"' in Alice step one. Elec. Power Grp., LLC v. Alston
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (quoting Enfzsh, 822 F.3d at
1335-36). The purpose of the claimed method is to create a social network
based on some resume-based shared network identifier, whatever it may be.
Thus, considering the character of claim 1 as a whole, we agree with the
Examiner that claim 1 is directed to grouping people based on their previous
work history.
Appellant contends that, even if the Examiner's concept of the claims
is correct, the claims are not directed to an abstract method of organizing
human activity. Reply Br. 6-8. We disagree. Both the Federal Circuit and
"the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfzsh, 822 F.3d at 1334. We agree with the Examiner that the
identified concept of grouping people based on their previous work history is
an abstract idea because it is sufficiently similar to abstract ideas identified
in other cases in the category of organizing human activity. See Ans. 4.
For example, claim 1 's grouping of people according to previous
work history based on certain resume information is analogous to the spam
email filtering concept found to be abstract in Intellectual Ventures I LLC v.
Symantec Corp, 838 F.3d 1307 (Fed. Cir. 2016). In that case, the Federal
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Circuit summarized the claimed method as "receiving e-mail (and other
data file) identifiers, characterizing e-mail based on the identifiers, and
communicating the characterization" and found this method to be abstract
because it was analogous to the human practice of looking at envelopes and
discarding letters from undesirable sources. See id. at 1313-14. The
Examiner's concept of claim 1 in this case is comparable to the spam email
filtering concept in Intellectual Ventures I because grouping people
according to previous work history requires matching identifiers in resume
information, which is similar to characterizing spam by matching identifiers
in emails. See id. In both cases, the claims operate to perform
characterizations based on data-"in other words, filtering files/e-mail"-
which is an abstract idea. Id. at 1313.
Other comparable examples of abstract methods of organizing human
activity, specifically, characterizations/classifications based on data, include:
In re TL! Communications LLC Patent Litigation v. AV Automotive, L.L. C.,
823 F.3d 607, 611 (Fed. Cir. 2016) ("classifying an image and storing the
image based on its classification"); Intellectual Ventures I LLC v. Capital
One Bank (USA), National Association, 792 F.3d 1363, 1369 (Fed. Cir.
2015) ("customizing web page content as a function of navigation history
and information known about the user"); Content Extraction and
Transmission LLC v. Wells Fargo Bank, National Association, 776 F.3d
1343, 1347 (Fed. Cir. 2014) ("data collection, recognition, and storage").
Appellant's argument that one cannot perform the method of claim 1
with pen and paper (see Reply Br. 8) fails to persuade us that claim 1 is not
directed to an abstract method of organizing human activity. But for the
preamble recitation in claim 1 of "a server computer system," the claimed
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method could indeed be performed by a human reading through paper
resumes and tallying with pen and paper which resume owners are
associated with which entities for different time periods. The social
networks would then be apparent from looking at the tally.
Appellant contends the claims are directed to an improvement in
computer functionality. Reply Br. 8-11. Specifically, Appellant argues the
"claimed invention makes it possible ... not only to complete the task, but
also to complete the task in significantly less time, and with greater accuracy
and consistency." Reply Br. 10. We disagree because the Federal Circuit
has found this line of argument unavailing. See OIP Technologies, 788 F.3d
at 1363 ("[R]elying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible."). Claim 1
does not recite specific computer components or processes, let alone frame
the method in terms of an improvement to such components or processes.
Rather, claim 1 merely recites the augmentation of a human practice by
computer automation, which shows only the use of a computer as a tool, not
an improvement to computer capabilities as in Enfzsh.
Based on the foregoing, we agree with the Examiner (Ans. 4) and find
claim 1 is directed to the abstract idea of grouping people based on previous
work history.
Alice Step Two
Appellant does not specifically identify arguments in the Reply Brief
as being directed to Alice step two. Nevertheless, to the extent that
Appellant's argument that "the claimed invention is not only an
improvement to computer capabilities, but also novel, nonobvious, and
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allowable" (Reply Br. 3--4) falls under this prong, we briefly address it here.
Although the second step of the Alice framework is described as a search for
an "inventive concept," 134 S. Ct. at 2355, the analysis is not an evaluation
of novelty or non-obviousness. A novel and non-obvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at
90; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) ("[A] claim for a new abstract idea is still an abstract idea.
The search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty.").
Accordingly, Appellant has not shown that any additional limitations
in claim 1, considered either individually or in combination, amount to
significantly more than the abstract idea itself. We are, therefore, not
persuaded the Examiner erred in rejecting claim 1, and claims 2-22 grouped
therewith, as patent-ineligible.
Obviousness
Appellant contends there would have been no motivation to combine
McGovern and Ehrlich for several reasons. App. Br. 14--15. First,
Appellant argues "Ehrlich does not use the term 'resume' in a way similar
to either McGovern or the Applicant's invention." App. Br. 15. Second,
Appellant argues "Ehrlich does not define the term 'jobs' in a way similar to
either McGovern or the Applicant's invention." Id. Third, Appellant argues
"Ehrlich does not define the network that he creates in a way similar to the
Applicant's invention." See App. Br. 16. We are not persuaded by
Appellant's arguments.
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We note that, despite arguing there to have been no motivation to
combine, Appellant does not specifically explain why the Examiner's
proposed motivation for combining Ehrlich with McGovern is insufficient.
See App. Br. 14--17. Rather, Appellant's position appears to rest on alleged
differences between Ehrlich and Appellant's invention. See id. Appellant's
argument that Ehrlich fails to disclose a "resume" (App. Br. 15), however, is
unavailing because, as the Examiner points out (Ans. 9--10), McGovern, not
Ehrlich, is relied upon for disclosing the claimed "resume." Appellant's
argument that Ehrlich fails to disclose 'jobs" (App. Br. 15) is also
unavailing because the claims do not recite 'jobs."
As to Appellant's argument that Ehrlich fails to disclose a "social
network" (App. Br. 16) Ehrlich describes:
a method and related system for analyzing the work history of
workers to determine a social network in terms of which workers
have worked together previously. The methodology could be
configured to use past working relationships on any one of
several criteria such as hours worked together, projects
successfully completed together as defined by client surveys or
other commonly used management measurement tools. . . . Once
the worker attributes are enhanced with the results of social
network analysis, a bipartite graph is built and weights applied to
each of the links. The weights are used to match the workers
with the particular jobs. The match is then used to assign a
worker to each job.
Ehrlich, ,r 9 (emphasis added). We see no appreciable difference between
Ehrlich's social network and the claimed "social network." As recited in
claim 1, Appellant's "social network" is created based on shared network
identifiers that overlap in time. Ehrlich's social network is created based on
shared work history of workers, where the work history can include "hours
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worked together, projects successfully completed together." Ehrlich, ,r 9.
Accordingly, we agree with the Examiner that Ehrlich discloses the claimed
"social network." Ans. 11.
In any case, as noted above, Appellant's arguments are directed to the
combination of McGovern and Ehrlich, but Appellant does not specifically
explain why the Examiner's combination lacks proper motivation. See App.
Br. 14--1 7. Accordingly, we are not persuaded the Examiner erred in
rejecting claims 1-22 as obvious.
DECISION
We affirm the Examiner's decision to reject claims 1-22.
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.
§ 4I.50(f).
AFFIRMED
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