O'DELL, Sean et al.Download PDFPatent Trials and Appeals BoardJan 10, 202014059306 - (D) (P.T.A.B. Jan. 10, 2020) Copy Citation 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. 14/059,306 10/21/2013 Sean O'DELL DISN/0098US03 (061692) 1071 77754 7590 01/10/2020 DISNEY ENTERPRISES, INC. c/o Patterson & Sheridan, LLP 24 Greenway Plaza Suite 1600 Houston, TX 77046-2472 EXAMINER SAINT CYR, LEONARD ART UNIT PAPER NUMBER 2658 NOTIFICATION DATE DELIVERY MODE 01/10/2020 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): PAIR_eOfficeAction@pattersonsheridan.com PSDocketing@pattersonsheridan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SEAN O’DELL, PAUL PAK, DREW BEECHUM, VITA MARKMAN, and MARC SILBEY ____________ Appeal 2019-000235 Application 14/059,306 Technology Center 2600 ____________ Before JOSEPH L. DIXON, DENISE M. POTHIER, and STEPHEN E. BELISLE, Administrative Patent Judges. BELISLE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 3–10, 12–19, 21–26, and 28. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest as Disney Enterprises, Inc. Appeal Br. 3. Appeal 2019-000235 Application 14/059,306 2 STATEMENT OF THE CASE The Claimed Invention Appellant’s invention generally relates to “managing the content of chat messages exchanged between users in online environments.” Spec. ¶ 2. According to the Specification, “[t]o promote civility and safety among users, a service provider hosting an online environment may desire to prevent the use of obscene language or other inappropriate communication, particularly in online environments developed for minors.” Spec. ¶ 4. “In such a case, chat software may filter chat messages by removing swear words, slurs, or other known terms of disparagement.” Spec. ¶ 4. According to the Specification, “[b]lacklist filtering does not detect semantically unsafe messages; it can only filter individual words,” and it allows phrases “by default unless blocked by a specific word in the blacklist,” which makes blacklist filtering “vulnerable to guests saying unsafe words using alternate spellings (replacing ‘S’ with ‘$’ or ‘cks’ with ‘x’).” Spec. ¶ 4. According to the Specification, “[w]hitelist filtering allows only safe words (or phrases), which prevents unsafe alternate spellings, but like blacklist filtering, does not detect semantically unsafe messages which can be formed using safe words.” Spec. ¶ 5. Also, “whitelist filtering blocks at the word (or phrase) level, so words which are safe in some contexts but unsafe in others are blocked,” so while “such whitelist chat is safe, it is limited in the number of phrases it allows,” which “[s]everely impact[s] user expressivity.” Spec. ¶¶ 5–6. Appellant submits “[t]he race to detect and block unsafe message is a continuous, expensive process and in the end never provides a reliably safe environment for our guests,” and “the more Appeal 2019-000235 Application 14/059,306 3 complex a system becomes, the longer it takes for a phrase to be validated.” Spec. ¶ 7. According to the Specification, embodiments of Appellant’s invention use a specific data structure called a “prefix trie” and “binary bitmaps” to evaluate chat messages. Spec. ¶¶ 40–44. Such embodiments “provide techniques for supplying real-time search and validation of phrases using linguistic phrase components” (Spec. ¶ 21), which purportedly “provide[] very quick analysis” of words and phrases (Spec. ¶ 96) and “fast lookups” to verify whether to permit a word or phrase (Spec. ¶ 44). Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A computer-implemented method for evaluating a chat message sent between users of an online environment, comprising: traversing a prefix trie based on the chat message, wherein each node within the prefix trie corresponds to a respective term, and wherein traversing the prefix trie further comprises: matching a first term in the chat message to a root node of the prefix trie; and matching one or more successive terms in the chat message, to a child node of a node corresponding to a preceding term in the chat message; and upon determining the chat message does not correspond to at least one traversable path in the prefix trie, based on a first node within the prefix trie not having a child node corresponding to a next term within the chat message: identifying a plurality of binary bitmaps corresponding to the chat message and relating to a plurality of templates; identifying at least one template of the plurality of templates based on the plurality of binary bitmaps, Appeal 2019-000235 Application 14/059,306 4 wherein each template specifies a pattern for an allowed chat message based on metadata specifying word type and word usage; and determining the chat message is valid based on the identified at least one template, and in response transmitting the chat message to a message recipient. Appeal Br. 25 (Claims Appendix). The Examiner’s Rejection The Examiner made the following rejection of the claims on appeal: Claims 1, 3–10, 12–19, 21–26, and 28 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 4–5. ANALYSIS2 Appellant disputes the Examiner’s conclusion that the pending claims are directed to patent-ineligible subject matter. Appeal Br. 11–23; Reply Br. 2–5. In particular, Appellant argues, inter alia, the claims as a whole are not directed to an abstract idea, because “the claims recite specific, technical, improvements to the capabilities of computing devices in processing chat messages sent between users of an online environment;” that is, “computers are not ‘invoked merely as a tool.’” Appeal Br. 14 (citing Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 2 Throughout this Decision, we have considered Appellant’s Appeal Brief filed May 9, 2018 (“Appeal Br.”); Appellant’s Reply Brief filed October 8, 2018 (“Reply Br.”); the Examiner’s Answer mailed August 8, 2018 (“Ans.”); the Final Office Action mailed December 12, 2017 (“Final Act.”); and Appellant’s Specification filed October 21, 2013 (“Spec.”). Appeal 2019-000235 Application 14/059,306 5 (Fed. Cir. 2018), and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)); see Reply Br. 2 (arguing the Examiner “improperly oversimplifies the claims”). Appellant contends “‘[e]mbodiments of the invention provide techniques for supplying real-time search and validation of phrases using linguistic phrase components,’” and more specifically, the “claims recite numerous limitations related to . . . the innovative use of a specific data structure called a ‘prefix trie’ and ‘binary bitmaps’ to evaluate the chat message.” Appeal Br. 14; see id. at 16 (“[T]he claims here . . . do not merely recite a ‘result’ (i.e., determining the appropriateness of a chat message), but rather recite ‘specific steps . . . that accomplish the desired result’: specific use of a ‘prefix trie’ and ‘binary bitmaps’ to determine that a chat message is valid.” (citing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018))). Appellant submits “the claimed use of a ‘prefix trie’ and ‘binary bitmaps’ allows for ‘very fast’ evaluation of a chat message sent between users of an online environment, an improvement in the functionality of computers.” Appeal Br. 16 (citing Spec. ¶¶ 44 (“fast lookups”), 63 (“Determining which [template bitmap] may be applied to a given [chat message] using bitwise operations is computationally very fast. Additionally as new words, tokens and templates become available; bitmaps can be easily re-generated to include those templates in the search.”). Additionally, Appellant argues the claims recite “significantly more” than the alleged abstract idea of determining if a chat message is acceptable or not (see Ans. 5), by reciting “a specific implementation that uses ‘a prefix trie’ and ‘a plurality of binary bitmaps,’ among other limitations, to evaluate chat messages in an online environment.” Appeal Br. 17 (citing BASCOM Appeal 2019-000235 Application 14/059,306 6 Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)); see Reply Br. 4. Appellant also asserts that this specific implementation “‘operate[s] in an unconventional manner to achieve an improvement in computer functionality,’” and that the Examiner cites no evidence to the contrary. Appeal Br. 17–18 (citing Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)); see id. at 18 (“[T]he presently claimed solution is ‘rooted in computer technology’ and solves a technical problem.”); Reply Br. 4 (“Examiner states that ‘using a prefix trie and a plurality of binary bitmaps are considered routine and conventional,’” but “the Examiner ignores [Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)] and again provides no factual basis for this assertion.”). The Supreme Court’s two-step framework guides our analysis of patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). In addition, the Office published revised guidance for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with respect to applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office Guidance”). If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter), then the first inquiry is whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d Appeal 2019-000235 Application 14/059,306 7 1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two prongs of analysis (i) does the claim recite a judicial exception (e.g., an abstract idea); and (ii) if so, is the judicial exception integrated into a practical application. 84 Fed. Reg. at 54. Under Office Guidance, if the judicial exception is integrated into a practical application, see infra, the claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claims are not directed to an abstract idea, the inquiry ends. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016). However, if the claim is directed to a judicial exception (i.e., recites a judicial exception and does not integrate the exception into a practical application), the next step is to determine whether any element, or combination of elements, amounts to significantly more than the judicial exception. See Alice, 573 U.S. at 217; see also 84 Fed. Reg. at 56. Here, we conclude Appellant’s independent claim 1 recites an abstract idea. More specifically, Appellant’s claims are generally directed to evaluating whether content of a message is valid or acceptable, as found by the Examiner. See Final Act. 4 (Examiner finding claims are “directed to determining if a chat message is acceptable or not.”); Ans. 5. This is consistent with how Appellant describes the claimed invention. See Spec. ¶¶ 2 (“[E]mbodiments of the invention are directed to . . . managing the content of chat messages exchanged between users in online environments.”), 8 (“A method and system is disclosed for evaluating a chat message sent between users of an online environment.”), 21 (“Embodiments of the invention provide techniques for supplying real-time search and validation of phrases using linguistic phrase components.”). Consistent with Office Guidance and case law, we conclude that evaluating whether content Appeal 2019-000235 Application 14/059,306 8 of a message is valid or acceptable is a mental process, namely, an observation, evaluation, and judgment, and, therefore, an abstract idea. See 84 Fed. Reg. at 52; Content Extraction & Transmission v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (concluding that a concept that can be performed in the human mind like “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” is an abstract idea); see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (explaining that “analyzing information by steps people go through in their minds” is a mental process within the abstract idea category and concluding claims directed to “collecting information, analyzing it, and displaying certain results of the collection and analysis” were abstract); accord In re BRCA1 & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (concluding that the concept of “comparing BRCA sequences and determining the existence of alterations,” like comparing terms in a message to acceptable terms and determining whether matches exist, is an “abstract mental process”). Claim 1 is reproduced below and includes the following claim limitation(s) that recite evaluating whether content of a message is valid or acceptable in the context of an online environment, emphasized in italics: 1. A computer-implemented method for evaluating a chat message sent between users of an online environment, comprising: traversing a prefix trie based on the chat message, wherein each node within the prefix trie corresponds to a respective term, and wherein traversing the prefix trie further comprises: matching a first term in the chat message to a root node of the prefix trie; and Appeal 2019-000235 Application 14/059,306 9 matching one or more successive terms in the chat message, to a child node of a node corresponding to a preceding term in the chat message; and upon determining the chat message does not correspond to at least one traversable path in the prefix trie, based on a first node within the prefix trie not having a child node corresponding to a next term within the chat message: identifying a plurality of binary bitmaps corresponding to the chat message and relating to a plurality of templates; identifying at least one template of the plurality of templates based on the plurality of binary bitmaps, wherein each template specifies a pattern for an allowed chat message based on metadata specifying word type and word usage; and determining the chat message is valid based on the identified at least one template, and in response transmitting the chat message to a message recipient. Appeal Br. 25 (Claims Appendix) (emphases added). As shown in the marked-up claim above, we find at least the noted limitations relating to “traversing a prefix trie” to be part of the mental process of evaluating whether content of a message is valid or acceptable, because, under their broadest reasonable interpretation, there is nothing in claim 1 itself or otherwise in evidence that forecloses them from being performed by a human, mentally or with pen and paper. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”); see also CyberSource Corp., 654 F.3d at 1375, 1372 (holding that the incidental use of “computer” or “computer readable medium” does not make a claim otherwise directed to a Appeal 2019-000235 Application 14/059,306 10 process that “can be performed in the human mind, or by a human using a pen and paper” patent eligible). Because claim 1 recites an abstract idea (i.e., evaluating whether content of a message is valid or acceptable), we need to identify whether there are “any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those elements alone and in combination to determine whether they integrate the judicial exception into a practical application. 84 Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017, Jan. 2018). We find claim 1 recites the additional elements of (a) identifying a plurality of binary bitmaps corresponding to a chat message and relating to a plurality of templates; (b) identifying at least one template of the plurality of templates based on the plurality of binary bitmaps, wherein each template specifies a pattern for an allowed chat message based on metadata specifying word type and word usage; and (c) basing the determination of whether a chat message is valid on the identified at least one template. Current Office Guidance indicates that, in certain instances, the additional elements in a claim may integrate its recited abstract idea into a practical application, such as by improving the accuracy, speed, or functioning of a computing device or electronic message filtering technology. See, e.g., 84 Fed. Reg. at 55; MPEP § 2106.05(a); see also Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018) (indicating that improving the speed of a user’s navigation through various views and windows of an electronic device interface is directed to an improvement in the functioning of computers). Appeal 2019-000235 Application 14/059,306 11 Regardless, even if claim 1 recites a judicial exception and does not integrate the exception into a practical application (i.e., the claim is directed to a judicial exception), we must still determine whether any element, or combination of elements, amounts to significantly more than the judicial exception. See Alice, 573 U.S. at 217; see also 84 Fed. Reg. at 56. This test is satisfied “when the claim limitations ‘involve more than performance of []well-understood, routine, [and] conventional activities previously known to the industry.’” Berkheimer, 881 F.3d at 1367 (quoting Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347– 48 (Fed. Cir. 2014) and Alice, 573 U.S. at 225). “Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer, 881 F.3d at 1369. In this case, the Examiner determines: [The claims] do not include additional elements that are sufficient to amount to significantly more than the judicial exception because “determining the chat message does not correspond to at least one traversable path in the prefix trie, identifying one or more templates, wherein each template specifies a pattern for an allowed chat message based on metadata specifying word type and word usage” are mere instructions to implement the idea on a computer, and/or are generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Final Act. 5 (emphasis added). The Examiner similarly determines “that using a prefix trie and a plurality of binary bitmaps are considered routine and conventional, since the specification discloses no particular prefix trie and binary bitmaps.” Ans. 6 (emphasis added). But the Examiner has not provided the evidence required by Berkheimer to support the Examiner’s determinations that the additional Appeal 2019-000235 Application 14/059,306 12 elements in Appellant’s claims perform well-understood, routine, and conventional activities. See Berkheimer, 881 F.3d at 1369. Rather, the Examiner merely provides conclusory and high-level general statements (Ans. 6; Final Act. 5), which are insufficient to satisfy the Berkheimer requirement. See Berkheimer, 881 F.3d at 1369–70. In particular, we agree with Appellant (Appeal Br. 12–13; Reply Br. 4–5) that the Examiner has not provided any of the four categories of information required by the Memorandum of Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (“Berkheimer Memorandum”): 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). . . . 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the well- understood, routine, conventional nature of the additional element(s). . . . 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s). . . . Berkheimer Memorandum at 3–4. Appellant argues, and we agree, the Examiner has not provided sufficient evidence (Final Act. 4–5; Ans. 6–7), as required by the Berkheimer Memorandum, issued April 19, 2018, prior to the Examiner’s Answer, that it was well-understood, routine, and conventional to use the combination of “prefix tries,” “binary bitmaps,” and “templates” as recited Appeal 2019-000235 Application 14/059,306 13 in claim 1 for evaluating chat messages sent between users in an online environment, and particularly for detection of semantically unsafe messages (e.g., basing the determination of whether a chat message is valid on the identified at least one template as recited). See Reply Br. 4 (“Examiner states that ‘using a prefix trie and a plurality of binary bitmaps are considered routine and conventional,’” but “the Examiner ignores Berkheimer and again provides no factual basis for this assertion.”). Thus, we are persuaded the Examiner erred in analyzing the claims under the Alice and Mayo framework and Office Guidance. Because we find this issue dispositive here, we do not address Appellant’s other arguments. Accordingly, constrained by the present record, we reverse the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 101. For similar reasons, we reverse the Examiner’s rejection under 35 U.S.C. § 101 of independent claims 10 and 19, which recite commensurate limitations. Additionally, we reverse the Examiner’s rejection under 35 U.S.C. § 101 of claims 3–9, 12–18, 21–26, and 28, which depend therefrom. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–10, 12– 19, 21–26, 28 101 Eligibility 1, 3–10, 12– 19, 21–26, 28 REVERSED Copy with citationCopy as parenthetical citation