International Business Machines Corporation

Patent Trials and Appeals Board

Apr 29, 2021

2019005586 (P.T.A.B. Apr. 29, 2021)

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.
15/004,098 01/22/2016 Jason T. Albert ROC920150393US1 5049
70748 7590 04/29/2021
INACTIVE - Rolnik Law Firm, P.C.
IBM Intellectual Property Law Department
1701 North Street
IPLaw Dept SHCB / Bldg 256-3
Endicott, NY 13760
EXAMINER
ADESANYA, OLUJIMI A
ART UNIT PAPER NUMBER
2658
NOTIFICATION DATE DELIVERY MODE
04/29/2021 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):
endiplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON T. ALBERT, CHRISTOPHER J. ENGEL,
KAHN C. EVANS, STEVEN B. JANSSEN,
MATT K. LIGHT, DAVID R. NICKEL,
KARL M. SOLIE, and MICHAEL L. TRANTOW
Appeal 2019-005586
Application 15/004,0981
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 8–20. We have jurisdiction under
35 U.S.C. § 6(b).

1 Appeal 2019-001100 (Application 15/075,383) is related to this appeal.
This appeal and its related appeal are directed to substantially similar
underlying inventions.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
Appeal 2019-005586
Application 15/004,098
2
We affirm.
CLAIMED SUBJECT MATTER
Claim 8, reproduced below, is illustrative of the claimed subject
matter:
8. A computer program product for preventing
duplicate posts within a Q and A forum, the computer program
product comprising a computer readable storage medium having
computer usable program code embodied therewith, the
computer program product comprising:
computer usable program code configured to receive a
user question via a network from a user at the Q and A forum;
computer usable program code configured to apply natural
language processing to the user question to form a user question
vector;
computer usable program code configured to apply natural
language processing to each question in a question and answer
(Q and A) corpus to form a plurality of corpus question vectors,
wherein each question is in a row having at least the each
question;
computer usable program code configured to compare the
user question vector to each of the plurality of corpus question
vectors to determine a closest match between the user question
vector and the corpus question vectors to obtain an identified
question and answer (Q and A) row;
computer usable program code configured to determine if
the identified Q and A row has a last answer that has a
corresponding confidence to the question of the identified Q and
A row that exceeds a confidence threshold and in response,
computer usable program code configured to determine if
the user question has a higher similarity to a question in the
identified Q and A row as compared to a question similarity
threshold,
and if so, determine that at least one pairing of the last
answer to another answer in the identified Q and A row has a
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Application 15/004,098
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similarity exceeding a last threshold to any answer in the
identified Q and A row that is not the last answer, and in
response, block the submission of the user question as a distinct
question and directing the user to at least one answer of the
identified Q and A row;
and if not, determine that the last answer is similar above
a last threshold to any answer in the identified Q and A row that
is not the last answer, and in response, the computer usable
program code configured to append the user question to the
identified Q and A row and further in response, post the question
and further respond to at least one request for the question by the
computer usable program code rendering the question over the
network.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Bierner US 2013/0297545 A1 Nov. 7, 2013
REJECTIONS
1. Claims 14–20 stand provisionally rejected on the ground of
non-statutory double patenting as being unpatentable over claims 1–7 of co-
pending Application No. 15/075,3833 in light of Bierner. Ans. 8.
2. Claims 8–20 stand rejected under 35 U.S.C. § 101 as directed to
a judicial exception to patentable subject matter without significantly more.
Ans. 2–3.
OPINION
Provisional Double Patenting Rejection
The Examiner provisionally rejects claims 14–20 on the grounds of
non-statutory obviousness-type double patenting over claims 1–7 of co-

3 Co-pending application 15/075,383 was subsequently abandoned.
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Application 15/004,098
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pending Application No. 15/075,383 in light of Bierner. Ans. 8. We do not
reach the merits of the Examiner’s obviousness-type double patenting
rejection because this issue is not ripe for decision by the Board. Panels
have the flexibility to reach or not reach provisional double-patenting
rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential).
Rejection under 35 U.S.C. § 101
Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
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 Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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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, 67 (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
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 (quotation marks omitted). “A
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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 State Patent and Trademark Office published revised
guidance on the application of § 101 (2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)) (“2019 Guidance”) and
recently, published an update to that revised guidance (October 2019 Patent
Eligibility Guidance Update, 84 Fed. Reg. 55,942) (jointly referred to as
“Guidance”). Under the Guidance, in determining whether a claim falls
within an excluded category, we first look, under step 2A of the Guidance,
to 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 MPEP §§ 2106.05(a)–(c), (e)–(h)).
See 2019 Guidance 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to step
2B of the Guidance and 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.
See 2019 Guidance 84 Fed. Reg. at 56.
Appeal 2019-005586
Application 15/004,098
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Prong One of Step 2A
The Examiner summarizes that the claims are directed to
“manipulating textual information using calculated similarity
values/mathematical correlations,” which the Examiner characterizes as
being “[a]n [i]dea of [i]tself,” “achievable by a human with a pen and
paper,” involving “mathematical correlations,” and, thus, an abstract idea.
Ans. 3. Appellant argues claim 8 (as well as claim 14) is not an abstract
idea, and “is best characterized as reducing network bandwidth by most
efficiently rendering questions over the network.” Appeal Br. 10.
Under prong 1 of step 2A, we first look to whether the claim recites
any judicial exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activities, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54. To this end,
treating independent claim 8 as representative, claim 8 recites:
• (1) “receiv[ing] a user question . . . from a user at the Q and
A forum”;
• (2) “apply[ing] natural language processing to the user
question to form a user question vector”;
• (3) “apply[ing] natural language processing to each question
in a question and answer (Q and A) corpus to form a
plurality of corpus question vectors, wherein each question
is in a row having at least the each question”;
• (4) “compar[ing] the user question vector to each of the
plurality of corpus question vectors to determine a closest
match between the user question vector and the corpus
question vectors to obtain an identified question and answer
(Q and A) row”;
• (5) “determin[ing] if the identified Q and A row has a last
answer that has a corresponding confidence to the question
of the identified Q and A row that exceeds a confidence
threshold and in response”;
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Application 15/004,098
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• (6) “determin[ing] if the user question has a higher similarity
to a question in the identified Q and A row as compared to a
question similarity threshold”;
• (7) “if so, determin[ing] that at least one pairing of the last
answer to another answer in the identified Q and A row has
a similarity exceeding a last threshold to any answer in the
identified Q and A row that is not the last answer, and in
response, block the submission of the user question as a
distinct question and directing the user to at least one answer
of the identified Q and A row”; and
• (8) “if not, determin[ing] that the last answer is similar
above a last threshold to any answer in the identified Q and
A row that is not the last answer, and in response, the
computer usable program code configured to append the
user question to the identified Q and A row and further in
response, post the question and further respond to at least
one request for the question”.

Limitation (1) requires receiving a user question from a user, which
can be performed mentally or with pen and paper, by reading or writing
down the user question. Limitations (2) and (3) respectively require
applying natural language processing to a question to form a vector, which,
as described in Appellant’s Specification, can merely involve analyzing a
question and reducing the question to a list of root words via, subtracting
overly common words, where the vector is a representation of the question,
where the analyzing and reducing can be performed mentally and involve
mathematical correlations, which are a form of mathematical concepts. See
e.g., Spec. ¶¶ 28–30. Further, limitations (4)–(8) collectively recite:
comparing vectors to determine a closest match and obtain an identified row;
determining if the identified row has a confidence score that exceeds a
confidence threshold; determining whether the similarity of compared
questions exceeds a question similarity threshold; determining whether
similarity of compared answers exceeds a similarity threshold; and either
Appeal 2019-005586
Application 15/004,098
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blocking submission of the question or posting the question. Similar to
limitations (2) and (3), all of the limitations (4)–(8) can be performed
mentally and involve mathematical correlations (i.e., mathematical
concepts). Both mental processes and mathematical concepts are categories
of abstract ideas under the 2019 Revised Guidance. 84 Fed. Reg. at 52–53.
Furthermore, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea . . . does not render the claim non-abstract.”); see
also Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016) (determining the pending claims were directed to a
combination of abstract ideas). Thus, the patentability analysis in this appeal
does not turn on exactly how various limitations are characterized as being
abstract, i.e., as either abstract “mental processes” or “mathematical
concepts.”
We are also not persuaded by Appellant’s argument that the claims
recite a technical solution to a technical problem rather than an abstract idea.
Instead, we agree with the Examiner that that there is no explicit correlation
in Appellant’s claims or Specification between the time spent by a server
collecting similar questions together and the time it takes for the server to
provide the answers to the user. See Ans. 9. In other words, there is no
explicit correlation between the claimed steps of the mental process and the
argued reduction of network latency/delay. See id.
Prong Two of Step 2A
The Examiner finds that the additional elements or combination of
elements in the claims other than the abstract idea per se (i.e., use of terms
“computer program product,” “computer readable storage medium,”
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“network,” “program code,” “system”) amount to no more than mere
instructions to implement the idea on a computer. See Ans. 3. The
Examiner further finds the claims, and Appellant’s Specification, describe
collecting similar questions together, but does not describe rendering
network bandwidth by more efficiently rendering questions over the
network. See id. at 13 (citing Spec. ¶¶ 4, 52). As further found by the
Examiner, the “increasing of the concentration or folding of plural versions
of the same questions or answers to a single point does not improve the
functionality of the generic computer as it merely adds to a collection/index
of text that is subsequently retrieved when searched.” See Ans. 13–14.
As previously described, Appellant argues claim 8 (as well as claim
14) solves a tangible non-abstract problem, namely, reducing network
bandwidth by more efficiently rendering questions over the network. See
Appeal Br. 11. As argued by Appellant, the increased efficiency of rending
questions improves the performance of the underlying computer. See id. at
12–15.
Under prong 2 of step 2A of the Guidance we determine whether the
claim as a whole integrates the recited abstract idea into a practical
application of the abstract idea. A claim that integrates a judicial exception
into a practical application will apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception. To evaluate whether the claims integrate the abstract
idea into a practical application, we identify whether there are any additional
elements recited beyond the abstract idea, and evaluate those additional
elements individually and in combination.
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Some exemplary considerations laid out by the Supreme Court and the
Federal Circuit indicate that an additional element that integrates an abstract
idea into a practical application can include (i) an improvement in the
functioning of a computer or to another technological field, (ii) an
application of the judicial exception with, or by use of, a particular machine,
(iii) a transformation or reduction of a particular article to a different state or
thing, or (iv) a use of the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP § 2106.05(a)–(c), (e)–(h).
Reviewing the claim limitations as a whole, we determine claim 8 (as
well as claim 14) does not recite additional elements that integrate the
abstract idea into a practical application. In particular we find that the claim
limitations do not improve the functioning of a computer or other
technological field. Instead the technological elements of the claim simply
link the mental process involving mathematical concepts to the technological
environment of networks and computers.
More specifically, the recited “computer program product,”
“computer readable storage medium,” “network,” “program code,” and
“system” fail to indicate any improvement to computer technology or other
technical field. Instead, these elements are discussed at only a high level of
generality in the Specification. For example, the Specification states that
embodiments of the invention may be implemented on a data processing
system, where the data processing system “is an example of a computer in
which code or instructions implementing the processes of the present
invention may be located.” Spec. ¶ 12. The Specification further states that
“[a]n operating system runs on [a processor], and coordinates and provides
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control of various components within [the] data processing system.” Id. at
¶ 14. Even further, the Specification states:
As will be appreciated by one skilled in the art, aspects of the
present invention may be embodied as a system, method or
computer program product. Accordingly, one or more
embodiments may take the form of an entirely hardware
embodiment, an entirely software embodiment (including
firmware, resident software, micro-code, etc.) or an embodiment
combining software and hardware aspects that may all generally
be referred to herein as a "circuit," "module" or "system."
Furthermore, embodiments may take the form of a computer
program product embodied in one or more computer readable
medium(s) having computer readable program code embodied
thereon.
Id. at ¶ 20.
We are not persuaded by Appellant’s argument that claim 8 (as well
as claim 14) defines a technical solution. As previously discussed, the
claims are, instead, directed to a solution to an underlying problem with the
mental process regarding duplicate or redundant questions and answers
contained within a set of questions and answers that are provided to a user.
Step 2B of the Guidance
The Examiner further finds the additional elements of the claims other
than the recited abstract idea are merely recitations of generic computer
structure that serve to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry. See Ans. 3. The Examiner relies upon the Bierner
reference as evidence of the well-understood, routine, and conventional
nature of the recited functionality of the claims. See Ans. 14 (citing Bierner
¶¶ 32, 49).
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Under step 2B of the Guidance we analyze the claims to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).
Considerations that are evaluated with respect to step 2B include
determining whether the claims as a whole add a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field.
We agree with the Examiner for the reasons provided by the
Examiner. See Ans. 3, 14. Accordingly, we sustain the Examiner’s
rejection of independent claims 8 and 14 under 35 U.S.C. § 101, and also
claims 9–13 and 15–20, for which Appellant does not make any additional
arguments. See Appeal Br. 15.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8–20 101 Eligibility 8–20

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED