Henry, Shawn

Patent Trials and Appeals Board

Nov 21, 2019

15383603 - (D) (P.T.A.B. Nov. 21, 2019)

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.
15/383,603 12/19/2016 Shawn Henry ASAP-0002-
U01 -TRACK1
4219
156979 7590 11/21/2019
GTC Law Group PC & Affiliates (ASAPP, INC.)
One University Ave., Ste. 302B
Westwood, MA 02090
EXAMINER
ZIDANIC, MICHAEL
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
11/21/2019 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):
USPATENTS@gtclawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHAWN HENRY1
____________________

Appeal 2019-000362
Application 15/383,603
Technology Center 2100
____________________

Before ROBERT E. NAPPI, LARRY J. HUME, and JULIET MITCHELL
DIRBA, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, ASAPP, INC., is the real party in
interest. App. Br. 2.
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INVENTION
The invention is directed to a system for suggesting resources based
on a context of interactions between two entities. Spec. ¶ 0017. Claim 9 is
illustrative of the invention and is reproduced below.
9. A system for presenting information about a resource to a
user, the system comprising:
at least one server computer comprising at least one
processor and at least one memory, the at least one server
computer configured to:
receive, a plurality of electronic messages during a
session between a first computing device of a first user and a
second computing device of a second user;
compute, a semantic representation of each message of
the plurality of electronic messages;
compute, a first context vector by processing the
semantic representations for the plurality of electronic
messages;
quantize, the first context vector to obtain a first context
hash vector;
select a first resource from a data store using the first
context hash vector and a hash vector for the first resource,
wherein the data store comprises a plurality of resources and
each resource of the plurality of resources is associated with a
hash vector; and
transmit, during the session, information about the first
resource to the first computing device.
EXAMINER’S REJECTION
The Examiner rejected claims 1 through 20 under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. Final Act. 2–4. 2

2 Throughout this Decision we refer to the Appeal Brief filed June 7, 2018
(“App. Br.”); the Reply Brief filed October 16, 2018, (“Reply. Br.”); Final
Office Action mailed February 9, 2018 (“Final Act.”); and the Examiner’s
Answer mailed August 23, 2018 (“Ans.”)
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ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of all of the disputed claims under 35 U.S.C. § 101.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”)
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Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office “USPTO” recently
published revised guidance on the application of § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Memorandum”). Under that guidance, we first determine
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan.
2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
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See Memorandum.
DISCUSSION
The Examiner determined the claims are not patent eligible because
they are directed to a judicial exception without reciting significantly more.
Final Act. 2–4. Specifically, the Examiner has provided an analysis of the
independent claims and concludes the claim recites limitations similar to
those held abstract by the courts. Final Act. 2–3 (citing Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)); Answer 2–3 (citing
Elec. Power Grp. and SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161,
1163 (Fed. Cir. 2018)).
Appellant argues the claims are not abstract as the result is a tangible
result. App. Br. 12. Further, Appellant argues that the claims are
necessarily rooted in computer technology and represent a technological
improvement. App. Br. 14–16, Reply Br. 2–3 (citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) and McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1, 9, and 16 under 35 U.S.C. § 101 as we
disagree with the Examiner’s determination that the claims do not recite an
improvement in a computer related technology.
Each of the independent claims recite receiving plural messages (a
data gathering or observation element), computing a message embedding or
semantic representation of a message, computing a context vector,
quantizing the cortex vector, selecting a resource using hash values (data
analysis or evaluation elements) and transmitting information (an significant
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post solution activity).3 These steps could broadly be construed as reciting a
mental process, however, in the context of the claims we consider the
limitations to recite an ordered combination of specific rules and as such are
patent eligible.
In McRO the court reviewed claims which use “a combined order of
specific rules that renders information into a specific format that is then used
and applied to create desired results: a sequence of synchronized, animated
characters.” McRO, 837 F.3d at 1315. The court found that the claims did
not “simply use a computer as a tool to automate conventional activity,” but
instead used the computer to “perform a distinct process” that is carried out
in a different way than the prior non-computer method to improve the
technology (of 3-D animation techniques). See McRO, 837 F.3d at 1314–16.
Here, as discussed above, each of the independent claims recites a
step of computing a message embedding or semantic representation for each
message, computing a context vector by processing the embedding or
semantic repetitions, quantizing the vector to obtain a hash vector and using
the hash vector to select a resource using the hash and a hash of the
resources. Thus, the claim recites a specific ordered set of rules to perform
on the received message. We find no evidence to demonstrate that steps of
computing context vectors from the messages, computing hashes of the
vectors, and using the hash with a hash of resources to select a resource is a
non-computer method of finding resources related to a message that is

3 We note that claim 1 contains a typographical error in that it recites
“computing a message embedding for of message.” This typographical error
appears to be created in the January 14, 2018 amendment which changed
“semantic representation for each message” to the current language. We
believe Appellant intended the claim to say “computing a message
embedding for each message.”
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merely implemented on a computer. Thus, as in McRO we consider the
claims to be directed to using a computer to perform a distinct process which
is carried out in a different way than the prior non-computer method. As
such we consider the claims to be directed to patent eligible subject matter
and we do not sustain the Examiner’s rejection of claims 1 through 20 under
35 U.S.C. § 101.
CONCLUSION
We reverse the Examiner’s rejection of claims 1 through 20 under 35
U.S.C. § 101. We encourage Appellant to amend claim 1 to correct the
typographical error noted in footnote 3.
DECISION SUMMARY
Claims
Rejected
35 U.S.C
§
Basis Affirmed Reversed
1–20 101 Subject Matter
Eligibility
1–20
REVERSED