Ex Parte Scholz

Patent Trial and Appeal Board

Jun 7, 2017

12243051 (P.T.A.B. Jun. 7, 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.
12/243,051 10/01/2008 Martin Scholz 82239029 9614
56436 7590 06/09/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
LIAO, JASON G
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
06/09/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN SCHOLZ
Appeal 2017-000772
Application 12/243,051
Technology Center 2100
Before ALLEN R. MacDONALD, JOHN D. HAMANN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-000772
Application 12/243,051
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4—15, 17, and 20-25. We have jurisdiction under 35 U.S.C.
§ 6(b).
Representative Claims
Representative claims 1,13, and 14 under appeal read as follows
(emphasis and formatting added):
1. A method of classifying an input data item,
comprising:
in response to a first query for a first category of a
hierarchy of categories that includes a multi-level arrangement
of categories, labeling, by a system including a processor, first
data items in search results responsive to the first query with the
first category;
in response to a second query for a second category of
the hierarchy of categories, labeling, by the system, second data
items in search results responsive to the second query with the
second category;
adding, by the system, the first data items and the second
data items to a set of data items that are labeled with respective
categories of the hierarchy of categories;
using a classifier executing in the system to identify,
from the set of data items, neighboring data items of the input
data item -, and
according to metric values relating the neighboring data
items to the input data item, determining, by the system,
whether at least one category is assignable to the input data
item from among the hierarchy of categories,
wherein the determining involves processing the
hierarchy of categories from more specific categories to
less specific categories,
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wherein at least a given one of the more specific
categories is at a different level of the hierarchy of
categories than at least a given one of the less specific
categories.
13. The method of claim 1, further comprising:
adding the input data item to the set of data items in
response to determining that the input data item has been
classified with a respective category with greater than a
predefined confidence threshold.
14. The method of claim 1, further comprising providing
information technology services, wherein the providing, using,
and determining tasks are part of the information technology
services.
Rejections1
The Examiner rejected claims 1, 2, 4—15, 17, and 20-25 “under
35 U.S.C. [§] 101 because the claimed invention is directed to [non-statutory
subject matter in the form of] a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.” Final
Act. 7 (emphasis omitted).2
1 The Examiner’s rejection of claim 14 under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite (Final Act.
8), has been withdrawn (Ans. 3).
2 Claims 1 and 14 are argued separately. Separate patentability is not argued
for claims 2, 4—13, 15, 17, and 20-25. Except for our ultimate decision, the
§ 101 rejection of claims 2, 4—13, 15, 17, and 20-25 is not discussed further
herein.
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Application 12/243,051
The Examiner rejected claims 1, 2, 6—13, 15, 17, and 20-25 under
35 U.S.C. § 103(a) as being unpatentable over the combination of USPTO
(listed at page 9 of the Final Action) and Dorie et al. (US 2009/0043797 Al;
pub. Feb. 12, 2009).3
The Examiner rejected claims 4 and 5 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of USPTO, Dorie, and Duda et al.
(Pattern Classification 174—187 (John Wiley and Sons, 2nd ed. 2001)).4
Section 101 Case Law
Eligibility under 35 U.S.C. § 101 is determined using the Alice!Mayo
framework. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).
The first step involves determining whether the claims at issue are directed to
a patent-ineligible concept. Id. at 2355. The second step involves determining
whether the elements of the claim contain an inventive concept sufficient to
transform a claimed abstract idea into a patent-eligible application. Id. at
2357. The “inventive concept” may arise in one or more of the individual
claim limitations or in the ordered combination of the limitations. Alice, 134
S.Ct. at 2355.
3 Claims 1 and 13 are argued separately. Separate patentability is not argued
for claims 2, 6—10, 12, 15, 17, and 20-25. Claim 11 is only argued by
reference to claim 1. App. Br. 26. Therefore, the rejection of claim 11 turns
on our decision as to claim 1. Except for our ultimate decision, the § 103
rejection of claims 2, 6—12, 15, 17, and 20-25 is not discussed further
herein.
4 Separate patentability is not argued for claims 4 and 5. Rather, these
claims are argued by reference to claim 1. App. Br. 26. Therefore, the
rejection of these claims turns on our decision as to claim 1. Except for our
ultimate decision, the § 103 rejection of these claims is not discussed further
herein.
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Application 12/243,051
In B as com, the Federal Circuit deferred consideration of the specific
claim limitations’ narrowing effect for Alice step two. Bascom Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
(Fed. Cir. 2016). The Federal Circuit held that determining whether the
claimed inventive concept is a technical improvement can aid in evaluating
the second step in the Alice!Mayo framework:
The district court thus concluded \wrongly! that BASCOM had
not asserted adequately that the claims disclose an inventive
concept because the limitations, “considered individually, or as
an ordered combination, are no more than routine additional
steps involving generic computer components and the Internet,
which interact in well-known ways to accomplish the abstract
idea of filtering Internet content.” [District Court Order, 107 F.
Supp.3d at 655.]
We agree with the district court that the limitations of the
claims, taken individually, recite generic computer, network and
Internet components, none of which is inventive by itself.
BASCOM does not assert that it invented local computers, ISP
servers, networks, network accounts, or filtering. Nor does the
specification describe those elements as inventive.
However, we disagree with the district court’s analysis of
the ordered combination of limitations. ... As is the case here,
an inventive concept can be found in the nonconventional and
non-generic arrangement of known, conventional pieces.
. . . [T]he patent describes how its particular arrangement of
elements is a technical improvement over prior art ways of
filtering such content.
Bascom, 827 F.3d at 1349—50, bracket and emphasis added.
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Appellant’s Contentions
1. Appellant contends “Claim[] 1 is not directed to an abstract idea
pursuant to step 1 of the Alice analysis.” App. Br. 8 (emphasis omitted).
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 because:
Appellant respectfully submits that claim 1 of the present
application is significantly different from the claim at issue in
Cyberfone. The claim of Cyberfone merely relates to collecting
information and then separating and transmitting the information
according to classification. In contrast, claim 1 of the present
application relates to a specific technique of . . . [Appellant
recites the steps of the method claim 1],
Claim 1 thus does not recite merely collecting information
and then separating and transmitting the information according
to classification, as was the case in Cyberfone. The claim at issue
in Cyberfone does not use “a classifier executing in the system to
identify, from the set of data items, neighboring data items of the
input data item.” The claim at issue in Cyberfone also does not
“determin[e], by the system, whether at least one category is
assignable to the input data item from among the hierarchy of
categories.”
App. Br. 9 (emphasis added).
The Examiner further asserted that claim 1 is directed “to
the process of classification,” which according to the Examiner
“is old in many arts.” Office Action at 7. This characterization
of claim 1 does not address the entirety of the subject matter that
is expressly recited by the language of claim 1.
Any claim can be boiled down to a one-word
characterization. Appellant respectfully submits that the
characterization of claim 1 as being directed to the process of
classification improperly ignores the actual subject matter that is
recited in the body of the claim.
App. Br. 9—10 (emphasis added).
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2. Appellant contends “Claim 1 recites subject matter that is
sufficient to transform the subject matter of claim 1 into a patent-eligible
application, under step 2 of the Alice analysis” (Br. 10 (emphasis omitted)).
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 because:
According to the Supreme Court in Alice, step 2 involves a
determination of “whether [a claim] contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into
a patent-eligible application.” Alice, 134 S. Ct at 2357 (emphasis
added). The Federal Circuit stated that the step 2 of the Alice
framework “is the search for an ‘inventive concept’.” DDR
Holdings, 773 F.3dat 1255 (emphasis added). Another Federal
Circuit decision, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709
(Fed. Cir. 2014) states that “any novelty in implementation of
the idea is a factor to be considered only in the second step of
the Alice analysis.” Ultramercial, 772 F.3d at 715 (emphasis
added).
App. Br. 12.
The Examiner has erred in asserting that “[t]he fact that a claim
may be obvious or non-obvious is not considered under the
Mayo test.” Office Action at 4 (emphasis added). This assertion
by the Examiner is directly contradicted by the specific guidance
provided by the Supreme Court and the Federal Circuit.
App. Br. 12.
[T]he subject matter of claim 1 provides an improvement to the
technical field of classifications of data items, which is clearly
recognized by persons of ordinary skill in the art to be useful for
various purposes, including searches such as web searches by
search engines over the Internet, patent searches in the Patent
Office’s patent database, and so forth.
App. Br. 13 (emphasis added).
The Examiner asserted that “the fact that hierarchical
classification is so widely used by the sciences and technological
fields shows that it is a basic tool for those sets of fields.” Id.
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This analysis by the Examiner does not address the specific
guidance provided by the 2014 Interim Guidance, which sets
forth that a claim that provides an improvement to another
technology or technical field constitutes “significantly more”
than the judicial exception itself. The subject matter of claim 1
provides an improvement to the technical field of classification,
which the Examiner recognizes can be used for various purposes.
App. Br. 14.
[Cjlaim 1 adds “unconventional steps that confine the claim to a
particular useful application,” namely classification that is useful
for various different applications as noted above.
The Examiner questioned “which steps [in claim 1] are
unconventional.” Office Action at 4. Appellant respectfully
submits that, as explained further below, at least the following
combination of elements is not taught or hinted at by the cited
references:
[Appellant quotes the entire body of claim 1 ]
Therefore, at least these steps are “unconventional steps”
when considered in combination, which confine the claim to a
particular useful application, namely the application of
performing classification.
App. Br. 14—15.
3. Appellant contends that the Examiner erred in rejecting claim 14
under 35 U.S.C. § 101 because:
Dependent claim 14 further recites “providing information
technology services, wherein the using and determining tasks are
part of the information technology services.”
Claim 14 recites that the “using” task and the
“determining” task of base claim 1 are part of providing
information technology services. The provision of information
technology services is well recognized by persons of ordinary
skill in the art as providing improvements to the functioning of a
computer, in this case an information technology system that
includes an arrangement of computers and other associated
hardware and software.
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Application 12/243,051
App. Br. 16.
4. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Dorie has a publication date and a filing date that are both after
the priority date of the present application. The present
application claims priority to a provisional application filed in
January 2008. The filing date of Dorie is July 28, 2008, which
is after the priority date of the present application.
Dorie claims priority to a provisional application
(60/952,457), filed in July 2007. However, the content of the
Dorie provisional application is substantially different from the
content of Dorie (the non-provisional application cited in the
Office Action). Thus, to the extent that subject matter of Dorie
relied upon by the final rejections is not found in the Dorie
provisional application, Appellant respectfully submits that such
subject matter would not be entitled to the § 102(e) date of the
Dorie provisional application.
Appellant reserves the right to challenge, in the future,
whether or not subject matter of Dorie relied upon by the
Examiner constitutes prior art with respect to the present
application, based on whether or not such subject matter is
supported by the Dorie provisional application.
App. Br. 18—19 (emphasis added).
5. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Appellant respectfully submits that unlike the inter­
relationship that exists between the “using a classifier” clause
and the “in response to a first query” clause, the “in response to
a second query” clause, and the “adding” clause of claim 1, the
Examiner has not established that any inter-relationship exists
between the subject matter described in EAST-UM/WEST-UM
and the subject matter described in ART-UM/ART-DDD.
App. Br. 20.
[T]he Examiner has not established that such folders in which
previous search results produced using the EAST or WEST tool
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are populated are used in the context of the AutoRT tool
described in ART-UM and ART-DDD.
App. Br. 21.
It thus appears that the ACE interface described in ART-
UM and in ART-DDD is designed for use by a limited subset of
users at the USPTO, namely SPEs. However, the EAST and
WEST tools appear to be tools used by Examiners to perform
searching.
There is clearly no teaching in the references cited by the
Examiner that the ACE interface would use results produced by
the EAST and WEST tools.
App. Br. 22.
6. Appellant contends that the Examiner erred in rejecting claim 13
under 35 U.S.C. § 103(a) because:
[Tjhere is absolutely no indication whatsoever that the ACE
search that is performed in ART-UM involves adding the input
data item to the set of data items in response to determining that
the input data item has been classified with a respective category
with greater than a predefined confidence threshold. What is
shown in the results from the ACE search in Fig. 3-2 of ART-
UM is a ranked list of classes and subclasses along with
respective relevance factors, numbers of hits, and other
information. The concept of adding an input data item to a set of
data items in response to determining that the input data item has
been classified with a respective category with greater than a
predefined confidence threshold is clearly not taught or hinted at
by ART-UM.
App. Br. 24—25 (emphasis added).
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Issues on Appeal
Did the Examiner err in rejecting claims 1 and 14 as being directed to
non-statutory subject matter?
Did the Examiner err in rejecting claims 1 and 13 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief arguments that the Examiner has erred.
Rejection under 35 U.S.C. § 101
As to Appellant’s above contention 1 (directed to claim 1), we
disagree. First, we disagree with the premise of Appellant’s argument that a
perceived difference from the claims in Cyberfone results in claim 1 not
being directed to an abstract idea. We agree with the Examiner’s
conclusion, and we note that subsequent to Appellant’s Appeal Brief our
reviewing court concluded that classifying and storing data in an organized
manner is a well-established ‘“basic concept’” sufficient to fall under Alice
step 1. In re TLI Commc’ns LLC, 823 F.3d 607, 613 (Fed. Cir. 2016).
Further, Appellant asserts that the claim steps form a specific technique.
However, beyond analogizing to Cyberfone, we do not find where Appellant
explains how and why the claim steps are not directed to an abstract idea.
Second, we disagree with Appellant’s secondary argument that, in
addressing Alice step 1, the Examiner “does not address the entirety of the
subject matter that is expressly recited by the language of claim 1.” App. Br.
10 (emphasis added). Appellant’s argument overlooks the Court’s guidance
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when discussing the Alice framework comprising steps 1 and 2. Alice, 827
F.3d at 1355 n.3 (“Because the approach we made explicit in Mayo
considers all claim elements, both individually and in combination, it is
consistent with the general rule that patent claims ‘must be considered as a
whole.’”).
As to Appellant’s above contention 2 (directed to claim 1), we
disagree. First, Appellant’s argument, that novelty is a factor to be
considered only in the second step of the Alice analysis, overlooks that this
is a technical centric inventive concept analysis in Alice step 2 which
requires the inventive concept be evaluated for resolving a particular
technical problem. DDR Holdings, LLC v. Hotels.com., L.P., 773 F.3d
1245, 1259 (Fed. Cir. 2014) (“[T]he claimed solution amounts to an
inventive concept for resolving this particular Internet-centric problem,
rendering the claims patent-eligible”). Further, our review concludes that as
to the rejection language quoted by Appellant (‘“[t]he fact that a claim may
be obvious or non-obvious is not considered under the Mayo test[,]’” (App.
Br. 12)), the Examiner was speaking to the abstract idea rather than the
inventive concept. DDR Holdings looks to whether the claim sets forth an
improvement in technology not whether there is an improved abstract idea.
“[Ujnder 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 Tech. Ltd. v. Merial, LLC, 818 F.3d 1369, 1376
(Fed. Cir. 2016).
Appellant also argues that the technical improvement is improved
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“web searches by search engines over the Internet” and “patent searches in
the Patent Office’s patent database.” We find neither web searches nor
patent searches in claim 1. Nor does Appellant explain particularly what the
alleged improvement is as to such searches. We agree with the Examiner’s
conclusion. As we note above, our reviewing court has concluded that
classifying and storing data in an organized manner is a well-established
“basic concept” sufficient to fall under Alice step 1. In re TLI Comma ’ns,
823 F.3d at 613. Therefore, we disagree with Appellant’s argument (App.
Br. 14) that classification is a technical field.
Second, although Appellant asserts ‘claim 1 adds “unconventional
steps that confine the claim to a particular useful application’” (App. Br. 14),
we do not find where Appellants have provide support for this assertion,
e.g., by explaining how and why any of the claim limitations are
unconventional. Rather, Appellant cites the entire body of claim 1 (App. Br.
15) and asserts that “at least these steps are ‘unconventional steps.’” Id.
As to Appellant’s above contention 3 (directed to claim 14), we
disagree. We conclude the claim 14 statement that the “tasks are part of the
information technology services” is exactly the “mere recitation of a generic
computer” the Court warns about in Alice. Alice, 134 S. Ct. at 2358.
Rejection under 35 U.S.C. § 103(a)
As to Appellant’s above contention 4 (directed to claim 1), we
disagree. Appellant points out the “present application claims priority to a
provisional application filed in January 2008 [01/30/2008].” Then
Appellant, without pointing out any particular subject matter, asserts “the
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content of the Dorie provisional application is substantially different from
the content of Dorie (the non-provisional application cited in the Office
Action).” App. Br. 18. Although Appellant asserts the Examiner has erred
and asserts the Dorie provisional and non-provisional applications differ, we
do not find where Appellants have provide support for these assertions, e.g.,
by explaining how the applications differ and why that difference causes the
rejection to be in error. Rather, we find Appellants’ assertions to be
conclusory. Such unsupported attorney argument, is entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Also, Appellant’s attempt
to reserve rights regarding the Dorie reference is unavailing. Rather,
Appellant either has rights or does not have them as is appropriate.
Appellant’s future rights are not increased or extended by any attempt to
reserve rights.
As to Appellant’s above contention 5 (directed to claim 1), we
disagree. Appellant argues “the Examiner has not established that such
folders in which previous search results produced using the EAST or WEST
tool are populated are used in the context of the AutoRT tool described in
ART-UM and ART-DDD.” App. Br. 21. Even if we adopt Appellant’s
position, it is insufficient to show the Examiner erred. Appellant is
essentially arguing anticipation when the rejection before us is based on
obviousness. We agree with the Examiner that ART-UM shows at least one
category [data set] is assignable to the input data item from among a
hierarchy of categories [in the USPC classes], that EAST-UM shows
creation of new data sets, and that the newly created data sets can form
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compound data sets. We conclude that it would have been obvious to
classify an input data item against newly created EAST-UM data sets in the
same manner that ART-UM classifies against the USPC classes.
As to Appellant’s above contention 6 (directed to claim 13), we
disagree. The ART-DDD clearly recites using a “high confidence factor”
when classifying (page 1-3), and the ART-UM recites that there exists a
“High Confidence Floor parameter value” (page 3-231). We agree with the
Examiner that ART shows using “a predefined confidence threshold.” Final
Act. 16.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1,2, 4—15, 17, and
20-25 under 35 U.S.C. § 101, as being directed to non-statutory subject
matter.
(2) The Examiner did not err in rejecting claims 1, 2, 4—13, 15, 17,
and 20-25 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1, 2, 4—15, 17, and 20-25 are not patentable.
DECISION
The Examiner’s rejection of claims 1, 2, 4—15, 17, and 20-25 under
35 U.S.C. § 101, as being directed to non-statutory subject matter, is
affirmed.
The Examiner’s rejections of claims 1, 2, 4—13, 15, 17, and 20-25 as
being unpatentable under 35 U.S.C. § 103(a) are affirmed.
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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).
AFFIRMED5
5 As the Examiner has shown that all the claims are unpatentable, we do not
further reject Appellant’s claim 5 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. However, should
there be further prosecution of these claims, the Examiner’s attention is
directed to our following concern.
On October 1, 2008, Appellant filed the original Specification and
claims. As filed the Specification and claims recited numerous equations of
the form “k (k» 1).” See, e.g., paragraph [0004], [0010], [0011], and claim 5
as originally filed. On September 2, 2011, Appellant filed an amendment
changing these numerous equations to now recite that k is greater than or
equal to 1, as shown in Appellant’s provisional application. On December 5,
2011, Appellant filed an amendment changing these numerous equations to
now recite that k is greater than or equal to 2. We have reviewed
Appellant’s Specification as filed (and provisional application) and do not
find support for this equation limitation amendment changing “1” to “2”.
Additionally, an objection based on new matter should be considered.
Furthermore, to the extent that there is further prosecution, we also
direct the Examiner’s attention to whether certain method claims contain
conditional limitations (e.g., claim 1 recites “in response to”), which may not
need to be shown for determining patentability. See Ex parte Schulhauser,
No. 2013-007847, 2016 WL 6277792, at *4 (PTAB Apr. 28, 2016)
(precedential) (holding “[t]he Examiner did not need to present evidence of
the obviousness of the remaining method steps of claim 1 that are not
required to be performed under a broadest reasonable interpretation of the
claim”).
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