Marc Light et al.

Patent Trials and Appeals BoardNov 17, 2021

2020004730 (P.T.A.B. Nov. 17, 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. 12/341,926 12/22/2008 Marc Light 113027.000060US1 1749 79804 7590 11/17/2021 Duncan Galloway Egan Greenwald, PLLC 9625 Ormsby Station Road Louisville, KY 40223 EXAMINER KIM, CHRISTY Y ART UNIT PAPER NUMBER 2169 NOTIFICATION DATE DELIVERY MODE 11/17/2021 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): carnold@dgeglaw.com kduncan@dgeglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARC LIGHT, FRANK SCHILDER, RAVI KUMAR KONDADADI, CHRISTOPHER C. DOZIER, WENHUI LIAO, and SRIHARSHA VEERAMACHANENI ____________ Appeal 2020-004730 Application 12/341,9261 Technology Center 2100 _____________ Before TREVOR M. JEFFERSON, HUNG H. BUI, and MINN CHUNG, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 3–8, and 10–22, all of the pending claims. Appeal Br. 21–25 (Claims App.). Claims 2 and 9–11 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.2 Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection for claims 1, 3–8, and 10–22. 1 “Appellant” herein refers to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, Thomson Reuters Global Resources Unlimited Company is identified as the real party in interest. Appeal Br. 1. 2 We refer to the Appellant’s Appeal Brief filed November 25, 2019 (“Appeal Br.”); Reply Brief filed June 8, 2020 (“Reply Br.”); Examiner’s Answer mailed April 6, 2020 (“Ans.”); Final Office Action mailed June 25, 2019 (“Final Act.”); and Specification filed December 22, 2008 (“Spec.”). Appeal 2020-004730 Application 12/341,926 2 STATEMENT OF THE CASE Appellant’s invention relates to “extraction of data and related information from documents, such as identifying and tagging names and events in text and automatically inferring relationships between tagged entities, events, and so forth.” Spec. 1:21–24. Figure 1, depicting named entity tagging and resolving system 100 for named-entity tagging, resolving and event extraction, is reproduced below with additional markings in color for illustration: Appeal 2020-004730 Application 12/341,926 3 Figure 1 shows named entity tagging and resolving system 100 including processor 101 and memory 102 for storing two basic software modules: (1) entity tagger 110 programmed to receive text segments, such as a sentence 109, and tag entity names within sentence 109 as being one of a person, company, and location; and (2) entity resolver 119 programmed to resolve named entities by associating or linking one or more tagged entitty names within text with an entry within authority files 130. Spec. 3:14–4:7, 6:29– 34. As shown in Figure 1, entity tagger 110 includes (i) tokenizer 111 to split sentence 109 or text segment into word tokens, (ii) zoner 12 to locate or isolate parts of the text (i.e., sentence 109) that need to be processed for tagging, and (iii) statistically sequence tagger 113 to tag text within sentence 109 as a person, company, and location, based on unambiguous name lists (lookup tables) 114 and rules 115. Spec. 3:14–4:26. Representative Claim Claims 1, 8, and 12 are independent. Representative claim 1 is reproduced below with disputed limitations emphasized and bracketed numerals added for clarity: 1. A computer system having at least one processor and at least one memory, the system comprising: an entity tagger module comprising machine readable code stored in the at least one memory and when executed by the at least one processor adapted to automatically tag entity names within a text segment as being one of a person, company, and location; the entity tagger module further adapted to [1] automatically pretag a first portion of the text segment as being one of a person, company, and location based on a list or rule, pretagging being irrespective of position of the first portion within the text segment and without applying statistical processes; Appeal 2020-004730 Application 12/341,926 4 a statistical sequence decoder operating on a word sequence, responsive to and constrained by the entity tagger module and comprising machine readable code stored in the at least one memory and when executed by the at least one processor adapted to [2] tag a second portion of the text segment as being one of a person, company, or location, the second portion being different than the first portion, the tagging of the second portion based in part on a set of features derived from a grouping of the pretagged first portion of the text segment; an entity resolver comprising machine readable code stored in the at least one memory and when executed by the at least one processor adapted to logically associate by the processor one or more of the tagged entity names with an entry in a data set of named entities; and the entity resolver further adapted to automatically generate a first set of relationship data associated with a relationship between the tagged entity name and a current legal event. Appeal Br. 21 (Claims App.). REJECTIONS AND REFERENCES (1) Claims 1, 3–8, 10–15, 17–20, and 22 stand rejected under 35 U.S.C. § 103 as obvious over the combined teachings of O’Leary et al. (US 2005/0131935 A1; published Jun. 16, 2005; “O’Leary”) and Miller (US 2006/0253274 A1; published Nov. 9, 2006; “Miller”). Final Act. 4–12. (2) Claims 16 and 21 stand rejected under 35 U.S.C. § 103 as obvious over the combined teachings of O’Leary, Miller, and Luo et al. (US 7,509,163 B1; issued Mar. 24, 2009; “Luo”). Final Act. 12–13. Appeal 2020-004730 Application 12/341,926 5 ANALYSIS In support of the obviousness rejection, the Examiner finds the combination of O’Leary and Miller teaches all limitations of Appellant’s claims 1, 8, and 12. Final Act. 4–12. In particular, the Examiner finds O’Leary teaches Appellant’s claimed “computer system,” shown in Figure 3, including: (1) “an entity tagger module . . . [i] to automatically tag entity names within a text segment as being one of a person, company, and location . . . [ii] to automatically pretag a first portion of the text segment as being one of a person, company, and location based on a list or rule, pretagging being irrespective of position of the first portion within the text segment and without applying statistical processes;” and (2) “an entity resolver . . . [i] to logically associate by the processor one or more of the tagged entity names with an entry in a data set of named entities . . . [ii] to automatically generate a first set of relationship data associated with a relationship between the tagged entity name and a current legal event.” Id. at 4–5 (citing O’Leary ¶¶ 10, 35, 46, Figs. 7, 10). The Examiner also finds O’Leary’s “entity tagger module” is further adapted “to tag a second portion of the text segment [] different than the first portion [] based in part on a set of features derived from a grouping of the pretagged first portion of the text segment.” Id. at 4 (citing O’Leary ¶¶ 33–34, 40, 47–50, Fig. 7). The Examiner acknowledges O’Leary’s computer system does not teach (3) the claimed “statistical sequence decoder for tagging,” but relies on Miller for teaching “a statistical sequence decoder operating on a word sequence for tagging portions of the text segment as being one of a person, company, or location” to support the conclusion of obviousness. Id. at 5 (citing Miller ¶¶ 44–45, Figs. 3–4). Appeal 2020-004730 Application 12/341,926 6 Appellant contends neither O’Leary nor Miller, in combination or individually, teaches or suggests the claimed (1) “entity tagger module . . . to automatically pretag a first portion of the text segment as being one of a person, company, and location based on a list or rule, pretagging being irrespective of position of the first portion within the text segment and without applying statistical processes” and the claimed (3) “statistical sequence decoder” . . . to tag a second portion of the text segment as being one of a person, company, or location, the second portion being different than the first portion, the tagging of the second portion based in part on a set of features derived from a grouping of the pretagged first portion of the text segment. Appeal Br. 8–17; Reply Br. 2–4. In particular, Appellant argues O’Leary does not disclose (1) “pretag[ging] a first portion of the text segment” and then (2) “tag[ging] a second portion of the text segment . . . different than the first portion . . . based in part on a set of features derived from a grouping of the pretagged first portion of the text segment,” as recited in claim 1, and similarly recited in claims 8 and 12. Appeal Br. 8– 10. According to Appellant, The marking of items in O’Leary as either primary or secondary evidence is a first identification step. The clarification of the items marked as primary and secondary evidence in O’Leary is a second step that operates only on those items already marked as evidence. The clarification of items marked as evidence in O’Leary does not operate on some other portion of a text segment or document. Marking items as primary evidence in O’Leary is not a pretagging as alleged by Examiner. O’Leary marks all tokenized text as primary and secondary evidence in a single step, and then any further evidence resolution steps operate on those items already marked as evidence. Changing an item from being marked as secondary evidence to primary evidence as Appeal 2020-004730 Application 12/341,926 7 disclosed in O’Leary does not “teach[] the claimed tag a second portion” as alleged by Examiner. Reply Br. 3 (emphasis added) (alteration in original). Appellant also argues Miller does not cure the deficiencies of O’Leary because Miller only teaches “a single tagging operation,” i.e. “an evaluation module 114 which first ‘tags’ and then determines an evaluation path,” and once done, “selects the best path according to the Viterbi algorithm.” Appeal Br. 17 (citing Miller ¶¶ 44, 50, Fig. 3). Because neither O’Leary nor Miller teaches (1) “pretag[ging] a first portion of the text segment” and then (2) “tag[ging] a second portion of the text segment . . . different than the first portion,” Appellant argues that (1) the combination of O’Leary and Miller is improper and (2) “the Examiner impermissibly relies on hindsight based on information gleaned solely from Appellant’s specification, including the claims in arriving at the proposed combination.” Id. at 16–17. In response, the Examiner takes the position that: [t]he broadest reasonable interpretation of these limitations [i.e., pretagging a first portion and tagging a second portion] includes a first portion that is pre-tagged (whether or not it is then tagged by the statistical sequence decoder) and a second, different portion that is tagged (whether or not it has been pre-tagged). Nothing in the claim prevents the statistical sequence decoder from operating on pre-tagged information. As explained above, the claimed pretagging of a first portion is interpreted as isolating portions of the document or text having proper names, and tagging of a second portion is interpreted as passing the parts of the text that need to be processed further to the statistical sequence tagger. Ans. 6 (some underlining added). According to the Examiner, O’Leary’s “[e]ntities definitively and unambiguously marked as primary evidence Appeal 2020-004730 Application 12/341,926 8 teaches the claimed ‘pretagging’” and “[s]econdary evidence is ambiguous and inconclusive, which is why it needs to be further analyzed in the evidence resolution step of O’Leary . . ., which teaches the claimed ‘tag a second portion.’” Id. at 7. The Examiner also explains that because O’Leary’s “promoted nominative terms in the evidence resolution step are not the same nominative terms marked as primary in the term recognition step,” the claimed “the second portion [is] being different than the first portion.” Id. We do not agree with the Examiner. At the outset, we note that claim terms, during examination, are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the rule of broadest reasonable interpretation, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, the broadest-construction rubric does not give the Office an unfettered license to interpret the words in a claim without regarding for the full claim language and the written description. In re Suitco Surface Inc., 94 USPQ2d 1640, 1644 (Fed. Cir. 2010). Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940). Here, the term “pretag” or “pretagging” is not defined in Appellant’s Specification. However, the term “pretagging” is described by Appellant’s Specification in the context of an overall tagging process conducted by the “statistical sequence tagger 113 (or decoder)” included as part of entity Appeal 2020-004730 Application 12/341,926 9 tagger 110, shown in Figure 1, which “uses one or more unambiguous name lists (lookup tables) 114 and rules 115 to tag the text within sentence 109 as company, person, or place or as a non-name.” Spec. 4:4–7. According to Appellant’s Specification, “pretagging” refers generally to pinning an entity in the text by the statistical sequence tagger 113 using the lists (lookup tables) 114 and rules 115, and “[p]inning is a specific way to use a statistical model to tag a sequence of characters and to integrate many different types of information and methods into the tagging process.” Spec. 5:24–26. As shown in Figure 1, the claimed “pretagging” and “tagging” are not two separate, distinct steps to be performed by two separate, distinct components, i.e., (1) entity tagger 110 and (2) statistical sequence tagger 113 (or decoder). Instead, both “pretagging” and “tagging” are part of an overall tagging process conducted by the statistical sequence tagger 113 (or decoder) as part of the entity tagger 110. Spec. 3:21–4:7, 5:19–26. For example, the entity tagger 110, as shown in Figure 1, includes (1) tokenizer 111 to split text sentence into word tokens, (2) zoner 112 to isolate parts of the text that need to be processed for tagging, and (3) statistical sequence tagger 113 to tag named entities within the text using lists (lookup tables) 114 and rules 115. Spec. 3:21–4:7. Based on Appellant’s Specification, we do not agree with the Examiner that (1) the claimed “pretagging” of “a first portion” can be broadly, but reasonably, interpreted to encompass O’Leary’s “isolating portions of the document or text having proper names” or (2) the claimed “tagging” of “a second portion” can be broadly, but reasonably, interpreted to encompass O’Leary’s “passing the parts of the text that need to be processed further,” (Ans. 6) especially, when O’Leary is completely silent Appeal 2020-004730 Application 12/341,926 10 regarding the recited relationship between (1) “a first portion of the text segment” and (2) “a second portion of the text segment . . . different than the first portion . . . based in part on a set of features derived from a grouping of the pretagged first portion of the text segment,” as recited in claim 1, and similarly recited in claims 8 and 12. Instead, O’Leary’s items (tokens of text) are marked or tagged as either “primary” or “secondary” evidence, as shown in Figure 10; but once marked, the same “secondary” evidence for a company or person is promoted to “primary” status when other primary evidence for that entity is also found in a content item. O’Leary ¶¶ 47–50, Fig. 10. While O’Leary teaches “tagging,” O’Leary does not teach Appellant’s claimed distinct steps of (1) “pretagging” of “a first portion” and then (2) “tagging” of “a second portion of the text segment . . . different than the first portion . . . based in part on a set of features derived from a grouping of the pretagged first portion of the text segment,” as recited in claims 1, 8, and 12. Like O’Leary, Miller also teaches “a single tagging operation,” i.e. “an evaluation module 114 which first ‘tags’ and then determines an evaluation path.” Appeal Br. 17 (citing Miller ¶¶ 44, 50, Fig. 3). As such, we are persuaded that Miller does not cure the deficiencies of O’Leary to arrive at Appellant’s claimed invention. For these reasons, we do not sustain the Examiner’s obviousness rejection of independent claims 1, 8, and 12, and the rejections of their respective dependent claims 3–7, 10, 11, and 13–22, which are not argued separately. Appeal 2020-004730 Application 12/341,926 11 NEW GROUNDS OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), however, we reject (1) claims 1, 3–8, and 10–22 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; and (2) claims 1, 3–8, and 10–22 under 35 U.S.C. § 101 as being directed to a non-statutory subject matter for the following reasons. New § 112, 1st Paragraph Rejection of Claims 1, 3–8, and 10–22 Claim 1 recites two separate, distinct software modules: (1) an entity tagger module and (2) a statistical sequence decoder to perform overlapping functions. For example, claim 1 requires “an entity tagger module” to perform two conflicting functions, i.e., (1) “to automatically tag entity names within a text segment as being one of a person, company, and location” and then (2) “to automatically pretag a first portion of the text segment as being one of a person, company, and location based on a list or rule, pretagging being irrespective of position of the first portion within the text segment and without applying statistical processes.” In addition, claim 1 also requires “a statistical sequence decoder” to perform a similar function as the claimed “entity tagger module,” but with a different content, i.e., (3) to tag a second portion of the text segment as being one of a person, company, or location, the second portion being different than the first portion, the tagging of the second portion based in part on a set of features derived from a grouping of the pretagged first portion of the text segment. Independent claims 8 and 12 recite similar limitations. Written description requirement of § 112 is a question of fact. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en Appeal 2020-004730 Application 12/341,926 12 banc). The disclosure must “reasonably convey[ ] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. We find the above limitations of Appellant’s claims 1, 8, and 12 are not supported by written description, including, for example: (1) the two separate, distinct software modules, i.e., (i) an entity tagger module and (ii) a statistical sequence decoder; (2) the conflicting functions performed by the entity tagger module, i.e., (i) “to automatically tag entity names within a text segment” and then (ii) “to automatically pretag a first portion of the text segment”; and (3) the conflicting functions performed by the entity tagger module and the statistical sequence decoder (i) “to automatically tag entity names within a text segment” and then (ii) “to tag a second portion of the text segment [] different than the first portion [] based in part on a set of features derived from a grouping of the pretagged first portion of the text segment.” These limitations were added during prosecution in an effort to distinguish over the cited prior art, including, for example, (1) the Amendment filed on September 9, 2013; (2) the Amendment filed on September 24, 2015; and (3) the Amendment filed on March 15, 2017. During the briefing, Appellant refers to pages 4–6, 14–15 of the Specification as providing written support for the claimed (1) “entity tagger module [] to automatically pretag a first portion of the text segment” and the Appeal 2020-004730 Application 12/341,926 13 claimed (2) “statistical sequence decoder [] to tag a second portion of the text segment [] different than the first portion [] based in part on a set of features derived from a grouping of the pretagged first portion of the text segment.” Appeal Br. 2 (citing Spec. 4:14–6:27, 14:15–5:3, Fig. 1). However, the cited portions of Appellant’s Specification only describe the claimed “statistically sequence decoder” as part of the entity tagger 110, shown in Figure 1, which “uses one or more unambiguous name lists (lookup tables) 114 and rules 115 to tag the text within sentence 109 as company, person, or place or as a non-name.” Spec. 4:4–7. As shown in Figure 1, the entity tagger 110 is the larger software module including three basic sub-components: (1) tokenizer 111 to split sentence 109 or text segment into word tokens, (2) zoner 12 to locate or isolate parts of the text (i.e., sentence 109) that need to be processed for tagging, and (3) statistically sequence tagger (decoder) 113 to tag the text within sentence 109 as a person, company, and location, based on unambiguous name lists (lookup tables) 114 and rules 115. Spec. 3:14–4:26, 14:15–15:3, Fig. 4. As previously discussed, the term “pretagging” is described by Appellant’s Specification in the context of an overall tagging process conducted by the “statistical sequence tagger 113 (or decoder).” Spec. 4:4– 7. According to Appellant’s Specification, “pretagging” refers generally to pinning an entity in the text by the statistical sequence tagger 113 using the lists (lookup tables) 114 and rules 115, and “[p]inning is a specific way to use a statistical model to tag a sequence of characters and to integrate many different types.” Spec. 5:24–26. Appeal 2020-004730 Application 12/341,926 14 However, we do not find in Appellant’s Specification any written description support for (1) the two claimed separate, distinct software modules, i.e., (i) an entity tagger module and (ii) a statistical sequence decoder; (2) claimed “entity tagger module [] to automatically pretag a first portion of the text segment” after “automatically tag[ging] entity names within a text segment as being one of a person, company, and location”; and (3) the claimed “statistical sequence decoder [] to [further] tag a second portion of the text segment [] different than the first portion . . . based in part on a set of features derived from a grouping of the pretagged first portion of the text segment,” as recited in claims 1, 8, and 12. For these reasons, we reject claims 1, 8, and 12, and of their respective dependent claims 3–7, 10, 11, and 13–22 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. New § 101 Rejection of Claims 1, 3–8, and 10–22 Patent eligibility is a question of law that is reviewable de novo. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Patentable subject matter is defined by 35 U.S.C. § 101, as follows: [w]hoever 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. In interpreting this statute, the U.S. Supreme Court has emphasized that patent protection should not preempt “the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 Appeal 2020-004730 Application 12/341,926 15 (2014) (“Alice”). The rationale is that patents directed to basic building blocks of technology would not “promote the progress of science” under the U.S. Constitution, Article I, Section 8, Clause 8, but instead would impede the same. Accordingly, laws of nature, natural phenomena, and abstract ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216). The Supreme Court has set forth a two-part Alice/Mayo test for subject matter eligibility in Alice (573 U.S. at 217–18). The first step is to determine whether the claim is directed to a patent-ineligible concept. Id. (citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the second step of the Alice/Mayo test in which 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.” Alice, 573 U.S. at 221 (internal quotation marks omitted) (quoting Mayo, 566 U.S. at 72, 79). There is no need to proceed to the second step, however, if the first step of the Alice/Mayo test yields a determination that the claim is directed to patent-eligible subject matter. The Federal Circuit has described the Alice step-one inquiry as looking at the “focus” of the claims, their “character as a whole,” and the Alice step-two inquiry as looking more precisely at what the claim elements add—whether they identify an “inventive concept” in the application of the ineligible matter to which the claim is directed. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Appeal 2020-004730 Application 12/341,926 16 In an effort to achieve clarity and consistency in how the Office applies the Supreme Court’s two-step framework, the Office published revised guidance interpreting governing case law and establishing a framework to govern all patent-eligibility analysis under Alice and § 101 effective as of January 7, 2019. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 Revised Guidance”). 2019 Revised Guidance Under the Revised Guidance, we first look under Alice step 1 or “Step 2A” to whether the claim recites: (1) Prong One: any judicial exceptions, including certain groupings of abstract ideas (i.e., [i] mathematical concepts, [ii] mental processes, or [iii] certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people); and (2) Prong Two: additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)– (h)).3 See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A, Prong One (Abstract Idea) and Prong Two (Integration into A Practical Application). Only if a claim: (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an “inventive concept” under Alice step 2 or 3 All references to the MPEP are to the Ninth Edition, Revision 08.2017 (rev. Jan. 2018). Appeal 2020-004730 Application 12/341,926 17 “Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18. For example, we look to whether the claim: 1) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 2) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 56. Alice/Mayo—Step 1 (Abstract Idea) Step 2A–Prongs 1 and 2 identified in the Revised Guidance Step 2A, Prong One Turning to the first step of the Alice inquiry, we find Appellant’s claims 1, 8, and 12 are directed to a patent-ineligible abstract concept of identifying and tagging names and events in text and automatically inferring relationships between tagged entities. All the steps of Appellant’s claim 1, including, for example: (1) “automatically tag[ging] entity names within a text segment as being one of a person, company, and location;” (2) automatically pretag[ging] a first portion of the text segment as being one of a person, company, and location based on a list or rule, pretagging being irrespective of position of the first portion within the text segment and without applying statistical processes;” (3) “tag[ging] a second portion of the text segment . . . different than the first portion . . . based in part on a set of features derived from a grouping of the pretagged first portion of the text segment;” and (4) “logically associate[ing] . . . one or more of the tagged entity names with an entry in a data set of named entities” involve information and transforming that information. Appeal 2020-004730 Application 12/341,926 18 However, information, as such, is intangible, and data analysis and algorithms, without more, are also abstract ideas. See, e.g., Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007); Parker v. Flook, 437 U.S. 584, 589, 594–95 (1978) (“an algorithm, or mathematical formula, is like a law of nature”); Gottschalk, 409 U.S. at 63. “[C]ollecting information [and analysis], including when limited to particular content (which does not change its character as information),” and “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more,” are “within the realm of abstract ideas.” Elec. Power Grp., 830 F.3d at 1353–54; see also Internet Patents, 790 F.3d at 1349; Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). That is, “[w]ithout additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech, 758 F.3d at 1351, 1350 (“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101”). Alternatively, the steps recited in Appellant’s claims 1, 8, and 12 can also be interpreted as mental steps to be performed in the human mind or by a human using a pen and paper. See CyberSource, 654 F.3d at 1372–73 (“[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under [section] 101.”); see also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes—or processes of human thinking—standing alone are not patentable even if they have practical application.”); Benson, 409 U.S. at 67 (“Phenomena of nature, Appeal 2020-004730 Application 12/341,926 19 . . . mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”) (emphasis added). For example, names and events in text can be identified, tagged and the tagged entities can be associated based on its relevancy by a librarian or an administrator using a pen and paper. Additionally, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource, 654 F.3d at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”). Thus, under Step 2A, Prong One, we determine that the claims recite an abstract idea identified in the Revised Guidance. Step 2A, Prong Two (Integration into a Practical Application) Under Revised Step 2A, Prong Two of the Revised Guidance, we must determine if the claims (specifically, any additional limitations beyond the judicial exception) integrate the judicial exception into a practical application. However, we discern no additional element (or combination of elements) recited in Appellant’s claims 1, 8, and 12 that may have integrated the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. For example, Appellant’s claimed additional elements (e.g., “nodes of a network”) do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is Appeal 2020-004730 Application 12/341,926 20 more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05(a)–(c), (e)–(h); Likewise, identifying and tagging names and events in text and automatically inferring relationships between tagged entities in electronic documents does not provide any “technical solution to a technical problem” as contemplated by the Federal Circuit in (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). See MPEP § 2106.05(a). For example, Appellant’s claimed “tag[ging] entity names within a text segment” and “logically associate[ing] . . . one or more of the tagged entity names with an entry in a data set of named entities” does not provide a technical “solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR, 773 F.3d at 1257. Nor does Appellant’s invention entail, like Amdocs, any “unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases)” and “improve the performance of the system itself.” Amdocs, 841 F.3d at 1300, 1302. The focus of Appellant’s invention is not to improve the performance of computers or any underlying technology; instead, the focus of Appellant’s invention is to identify relevant information about entities, such as companies, persons, or locations in electronic documents. Spec. 1:21–2:10. For these reasons, we do not find any “additional elements” recited in claims 1, 8, and 12 integrate the abstract idea into a practical application. Appeal 2020-004730 Application 12/341,926 21 Alice/Mayo—Step 2 (Inventive Concept) Step 2B identified in the Revised Guidance Under the 2019 Revised Guidance, 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 adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or, 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 Revised Guidance, 84 Fed. Reg. 56. However, we find no element or combination of elements recited in Appellant’s claims 1, 8, and 12 that contain any “inventive concept” beyond the abstract concept or add anything “significantly more” to transform the abstract concept into a patent-eligible application. Alice, 573 U.S. 208 at 221. Utilizing generic computer components (e.g., a processor and memory, shown in Appellant’s Figure 1) for identifying and tagging entities from text and inferring relationships between tagged entities does not alone transform an otherwise abstract idea into patent-eligible subject matter. As our reviewing court has observed, “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 222). Because Appellant’s claims 1, 8, and 12 are directed to no more than a patent-ineligible abstract concept and do not recite something “significantly more” under the second prong of the Alice analysis, we issue a new ground of rejection of claim 1, 3–8, and 10–22 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Appeal 2020-004730 Application 12/341,926 22 CONCLUSION On the record before us, we conclude Appellant has demonstrated the Examiner erred in rejecting (1) claims 1, 3–8, 10–15, 17–20, and 22 as obvious over the combined teachings of O’Leary and; and (2) claims 16 and 21 as obvious over the combined teachings of O’Leary, Miller, and Luo. However, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection for (1) claims 1, 3–8, and 10–22 as failing to comply with written description requirement under 35 U.S.C. § 112, first paragraph; and (2) claims 1, 3–8, and 10–22 as containing patent ineligible subject matter under 35 U.S.C. § 101. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed New Grounds 1, 3–8, 10–15, 17–20, 22 103 O’Leary, Miller 1, 3–8, 10–15, 17–20, 22 16, 21 103 O’Leary, Miller, Luo 16, 21 1, 3–8, 10–22 112 Written Description 1, 3–8, 10–22 1, 3–8, 10–22 101 Eligibility 1, 3–8, 10–22 Overall Outcome 1, 3–8, 10–22 1, 3–8, 10–22 Appeal 2020-004730 Application 12/341,926 23 Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Further, § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED 37 C.F.R. § 41.50(b)