O'DELL, Sean et al.

Patent Trials and Appeals Board

Jan 10, 2020

14059306 - (D) (P.T.A.B. Jan. 10, 2020)

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.
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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
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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,
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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.”).
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(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
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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
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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
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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
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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
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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).
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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
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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
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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