ADP, LLCDownload PDFPatent Trials and Appeals BoardOct 12, 20212020004778 (P.T.A.B. Oct. 12, 2021) 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. 15/071,432 03/16/2016 Jason F. Melo ES2015023-1 1059 126105 7590 10/12/2021 Duke W. Yee Yee & Associates, P.C. P.O. BOX 6669 MCKINNEY, TX 75071 EXAMINER FEACHER, LORENA R ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 10/12/2021 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): ptonotifs@yeeiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON F. MELO, DANIEL DAEHYUN KIM, and SIOBHAN LOUGHMAN SABINO Appeal 2020-004778 Application 15/071,432 Technology Center 3600 Before JASON V. MORGAN, MICHAEL J. STRAUSS, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 10–13, 16–18, and 20–34, all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Automatic Data Processing, Inc. Appeal Brief filed January 6, 2020 (“Appeal Br.”) at 2. 2 Appellant canceled claims 1–9, 14, 15, and 19. Appeal Br. 14–21 (Claims Appendix). Appeal 2020-004778 Application 15/071,432 2 CLAIMED SUBJECT MATTER Summary Appellant’s claimed subject matter relates generally to “analyzing information about skills for an organization.” Spec. ¶ 2.3 In an example approach provided in the Specification: An information management system comprises a hypergraph and a skill analyzer. The hypergraph comprises influence objects and the hypergraph comprises edges. A first portion of the edges connects influence objects to objects for people in the organization and a second portion of the edges connects the influence objects to the objects for the skills for the people. A group of influence edges connects the first portion of the edges to the second portion of the edges to each other in which the group of influence edges are for a group of influences on the skills present in an organization. The skill analyzer identifies the group of influences on a skill in the skills in the organization using the group of influence objects in the hypergraph, enabling performing an operation for the organization based on the influences on the skills identified. Id. ¶ 10. Exemplary Claim Claims 10, 21, and 26 are independent. Claim 10 is exemplary of the claims on appeal and is reproduced, with bracketed lettering added, below: 10. A method for identifying skills in an organization, the method comprising: 3 In addition to the Appeal Brief noted above, we refer to: (1) the Specification filed March 16, 2016 (“Spec.”); (2) the Final Office Action mailed August 5, 2019 (“Final Act.”); (3) the Examiner’s Answer mailed April 9, 2020 (“Ans.”); and (4) the Reply Brief filed June 8, 2020 (“Reply Br.”). Appeal 2020-004778 Application 15/071,432 3 [(a)] representing, by a computer system, a hypergraph, wherein the hypergraph comprises: [(a1)] a first set of objects representing influencers in the organization; [(a2)] a second set of objects representing persons in the organization; [(a3)] a third set of objects representing skills in the organization; [(a4)] a first edge type that connects source objects in the first set of objects to target objects in the second set of objects, wherein an edge from the first edge type represents a connection between an influencer in the organization and a person in the organization; [(a5)] a second edge type that connects source objects in the second set of objects to target objects in the third set of objects, wherein an edge from the second edge type represents a connection between a skill and a person in the organization; [(a6)] influence edges that connect the first edge type to the second edge type, wherein an influence edge represents an influence the influencers have over a presence of the skill; [(b)] identifying, by the computer system, influences on a given skill in the organization according to a group of influencers represented in the hypergraph; and [(c)] displaying, by the computer system, the hypergraph on a display system to visualize influences on skills in the organization. Appeal Br. 14 (Claims Appendix). Appeal 2020-004778 Application 15/071,432 4 REJECTION The Examiner rejects claims 10–13, 16–18 and 20–34 under 35 U.S.C. § 101 as directed to an exception to patent-eligible subject matter without reciting significantly more. Final Act. 2–9. OPINION We review the appealed rejection for error based upon the issues identified by Appellant and in light of Appellant’s arguments and the evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Appellant appeals the Examiner’s rejection4 of all of the claims as directed to ineligible subject matter under § 101. Appeal Br. 7–13. Appellant’s arguments refer to limitations recited in claim 10. See id. at 11 (“For the purposes of this discussion, independent claim 10 is representative of independent claims 21 and 26.”). We, therefore, select independent claim 10 as exemplary of the group. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). 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 held that § 101 includes implicit exceptions—laws of nature, natural phenomena, and abstract ideas—which are not patent-eligible. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In January 2019, the Office issued the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), 4 The Examiner withdraws the rejection of claim 10 under 35 U.S.C. § 112(b). Ans. 2. Appeal 2020-004778 Application 15/071,432 5 which addresses the manner in which § 101 case law is to be applied by the Office. In October 2019, the Office issued an update to explain further the manner in which the Guidance should be implemented. See October 2019 Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites /default/files/documents/peg_oct_2019_update.pdf (“Guidance Update”). The Board is required to adhere to these guidance documents as a matter of Office policy. Guidance, 84 Fed. Reg. at 51. The Guidance sets forth a four- part analysis for determining whether a claim is eligible subject matter under § 101; the four parts are labeled here as Step 1, Step 2A Prong 1, Step 2A Prong 2, and Step 2B. Id. at 53–56. Guidance Step 1 First, under “Step 1,” we consider whether the claimed subject matter falls within the four statutory categories set forth in § 101, namely “[p]rocess, machine, manufacture, or composition of matter.” Guidance, 84 Fed. Reg. at 53–54; see 35 U.S.C. § 101. Appellant’s independent claim 10 recites a computer-implemented method (i.e., a “process”), independent claim 21 recites a “computer program product” (i.e., a “manufacture”), and independent claim 26 recites an “information management system” (i.e., a “machine”). As such, the claims are directed to a statutory class of invention within § 101 and we proceed to the next step. Guidance Step 2A Prong 1 (Judicial Exceptions) Second, under “Step 2A Prong 1,” we evaluate “whether the claim recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural phenomenon.” Guidance, 84 Fed. Reg. at 54; see Alice, 573 U.S. at 216–17. Appeal 2020-004778 Application 15/071,432 6 The Examiner determines that claim 10 recites a judicial exception— specifically, an abstract idea. Final Act. 7. According to the Examiner, claim 10 recites an abstract idea in the form of “Certain Methods of Organizing Human Activity.” Id. In particular, the Examiner determines claim 10 “deal[s] with managing personal behavior or relationships or interactions between people demonstrated by the hypergraph.” Ans. 3; Final Act. 7. Of particular relevance, the Examiner determines: Claim 10 recites identifying influences on a given skill in the organization according to a group of influencers represented in a hypergraph. For instance, the hypergraph represents relationships/connections between entities (e.g. people, skills) within an organization. Identifying the influences on a skill requires analyzing the object edges to determine the influences or relationship magnitude between entities, which is managing the relationships or interactions between people. Ans. 3. Appellant argues claim 10 is “not directed to managing personal behavior” or “managing interactions between people.” Appeal Br. 8. Rather, according to Appellant, the claim is “directed towards the ability of quickly and efficiently identifying the presence of specific skills possessed by individuals within an organization and identifying how the presence of such skills within the organization are influenced as a result of this identification.” Id. Appellant’s arguments are unpersuasive. We agree with the Examiner that claim 10 recites an abstract idea that falls within the category of Certain Methods of Organizing Human Activity. Final Act. 7. Apart from additional elements and extra-solution activity discussed separately below, claim 10, under a broadest reasonable interpretation, recites steps focused on Appeal 2020-004778 Application 15/071,432 7 managing personal behavior or interactions between people, which is a long- practiced human activity. As the Examiner points out, “the hypergraph represents relationships/connections between entities (e.g. people, skills) within an organization.” Ans. 3. Claim 10 further recites “[b] identifying . . . influences on a given skill in the organization according to a group of influencers represented in the hypergraph.” Appeal Br. 14. The Guidance instructs that “[c]ertain methods of organizing human activity” include “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” Guidance, 84 Fed. Reg. at 52. We agree with the Examiner that identifying influences on a given skill in the organization using a hypergraph that represents relationships relates to managing relationships or interactions between people. The Examiner also determines that claim 10 recites an abstract idea in the form of a mental process. Ans. 3. According to the Examiner, the claimed steps “fall[] under Mental Processes as the representing, identifying and displaying could reasonably be performed in the human mind or using a pen and paper.” Id. We agree with the Examiner. Apart from additional elements and extra-solution activity discussed separately below, claim 10 recites a method including the steps of: (a) “representing . . . a hypergraph” including specific objects and edge types as set forth in (a1)–(a6); (b) “identifying . . . influences on a given skill in the organization according to a group of influencers represented in the hypergraph;” and (c) “displaying . . . the hypergraph on a display system.” Appeal Br. 14. Appeal 2020-004778 Application 15/071,432 8 In particular, limitation (a) recites “representing . . . a hypergraph” including specific objects and edge types as set forth in (a1)–(a6).” Id. Appellant relies, in part, on Figure 8 of the Specification to disclose the generated hypergraph. Appeal Br. 4. Figure 8 illustrates “a portion of a hypergraph [that] is shown to illustrate an influence on a skill.” Spec. ¶ 121. The hypergraph of Figure 8 illustrates circles variously connected by lines to indicate objects or individuals “in an organization” and relationships and skills possessed by individuals, respectively. Id. ¶¶ 122, 124. To create the hypergraph of Figure 8, a person could have envisioned the relationships between objects mentally without analyzing a large amount of data and could have sketched the circles and the connecting lines making up the hypergraph using pen and paper. Appellant argues: The October Guidance has established that “claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind.” (the October Guidance, pp. 7) It is no doubt that hypergraph can be drawn using pen and paper when there is only a few nodes and edges. However, when drawing hypergraph with massive amounts of information, for example, a relationship mapping of employees in a multinational organization, the “drawer” has to consider the number of edge-crossings, the number of bends in edges, the area needed, the degree of symmetry and many other factors that may contribute to the visualization of the hypergraph. It would be impractical for a person or even a group of people to draw a hypergraph with thousands of nodes with edges that are required to represent the relationships in the hypergraph simply because human mind is not equipped to perform such complicated task. This task cannot be performed in the human Appeal 2020-004778 Application 15/071,432 9 mind or with pen and paper in a practicable timeframe to have any value for decision making. Reply Br. 2–3. This argument is unpersuasive because it relies on aspects of the invention not recited in the claim. For example, claim 10 does not recite drawing a “hypergraph with massive amounts of information, for example, a relationship mapping of employees in a multinational organization.” Id. at 3. Moreover, even if this aspect were claimed, “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Limitation (b) recites “identifying . . . influences on a given skill in the organization according to a group of influencers represented in the hypergraph.” Appeal Br. 14. Appellant relies on paragraphs 150 and 151 of the Specification to disclose limitation (b). Appeal Br. 4. Of particular relevance, the Specification states that “[t]he process searches a hypergraph for an influence node for the skill (step 1202). The search in step 1202 is made using an identifier for the skill. The identifier may be the name of the skill or some other suitable identifier.” Spec. ¶ 150. Thus, the cited paragraph describes searching for a particular name in the hypergraph. Id. The Specification discloses no algorithm or technical detail to support an assertion that this ordinary human mental process could not be practically performed by the human mind. Accordingly, limitation (b) reasonably can be characterized as reciting a mental process. Appeal 2020-004778 Application 15/071,432 10 Limitation (c) recites “displaying . . . the hypergraph on a display system.” Appeal Br. 14. Displaying data constitutes a mental process. More specifically, displaying data constitutes expressing an opinion, which is recognized as a mental process. 2019 Guidance, 84 Fed. Reg. at 52. Accordingly, limitations (a)–(c) recite an abstract idea in the form of a mental process under the Guidance. In addition to determining that limitations (a) through (c) each recite an abstract idea under the Guidance, we note that our reviewing court has found claims relating to similar subject matter recite an abstract idea. See Elec. Power Grp., LLC v. Alston, S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (finding “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, recites a mental process.); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (finding abstract claims drawn to collecting and analyzing information and notifying a user based on the analysis); Voter Verified, Inc. v. Election Systems & Software LLC, 887 F.3d 1376 (Fed. Cir. 2018) (finding claims reciting voting, verifying the vote, and submitting the vote for tabulation to be a certain method of organizing human activity). For the reasons discussed above, each of limitations (a) through (c) recite one or more judicial exceptions to patent-eligible subject matter under Step 2A, prong 1, of the 2019 Guidance. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.”). Appeal 2020-004778 Application 15/071,432 11 Guidance Step 2A Prong 2 (Practical Application) Third, having determined that claim 10 recites at least one abstract idea, we evaluate whether “the claim as a whole integrates the recited judicial exception into a practical application of the exception.” Guidance, 84 Fed. Reg. at 54–55 (citing MPEP § 2106.05(a)–(c), (e)–(h)). “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.” Id.; see Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012). This evaluation is conducted by first “[i]dentifying whether there are any additional elements recited in the claim beyond the judicial exception(s),” and then “evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.” Guidance, 84 Fed. Reg. at 54–55. The Examiner identifies the additional element in claim 10 as a generically recited computer system. Final Act. 11. The Examiner determines that “the nominal recitation of a generic computer (e.g. a computer system) does not preclude the claim limitations from being abstract.” Id. We agree with the Examiner’s determination that this additional element fails to impose a meaningful limit on the judicial exception because the Specification describes the claimed computer system at a high-level of generality rather than applying the exception in a meaningful way. See Spec. ¶ 57 (“Computer system 138 is a hardware system and includes one or more data processing systems. . . . The data processing systems may be selected Appeal 2020-004778 Application 15/071,432 12 from at least one of a computer, a server computer, a tablet, or some other suitable data processing system.”). Appellant argues that claim 10 is analogous to the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). According to Appellant, claim 10, like the claims in DDR Holdings, should result in a finding of patent eligibility because: The creation and implementation of computer implemented large scale intra-organizational hypergraphs were not practical in the pre-internet world. The ability to create a hypergraph to enable a user to visualize connections between individuals and skills within an organization, without the aid of the internet, would be unduly challenging at best, and impossible at worst. Accordingly, the claims in the present case do not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.” Appeal Br. 10. We are not persuaded of error. In DDR Holdings, the claimed invention created a hybrid web page that combined advantageous elements from two web pages, bypassing the expected manner of sending a visitor to another party’s web page, in order to solve the internet-centric problem of retaining website visitors. DDR Holdings, 773 F.3d at 1257–59. Here, Appellant has not established that claim 10 is directed to improving a computer technology or technological process. Unlike the invention in DDR Holdings, claim 10 is not limited to improving a web or Internet centric technology. Rather, claim 10 recites a specific way and specific context for representing a hypergraph. Namely, by displaying “the hypergraph on a display system to visualize influences on skills in the organization.” Appeal Br. 14. While claim 10’s steps limit the scope of the Appeal 2020-004778 Application 15/071,432 13 abstract concept by displaying a particular hypergraph, the limitations are not sufficient to transform Appellant’s otherwise patent-ineligible abstract idea into patent-eligible subject matter. Considering claim 10 as a whole, Appellant’s claimed invention lacks a technical solution to a technical problem because the mere presence of a computer system in the claim to display data and search for names does not necessarily indicate a technical solution. Thus, unlike the claims in DDR Holdings, the solution offered by Appellant’s claim 10 is not necessarily rooted in any computer or network technology, as evidenced by the claim’s failure to recite anything other than a generic computer system. Next, Appellant argues that the “limitations of the claim[] are integrated into practical applications” because claim 10 “covers a very specific way of forming a hypergraph to identify skills and their influences within an organization and does not monopolize either the general concept of identifying skills or the use of hypergraphs.” Appeal Br. 11. Appellant’s argument relies on limitations (b) and (c) and, therefore, is unpersuasive because these limitations are part of the abstract idea, as discussed above in Step 2A, Prong 1. Id. This argument improperly relies on the novelty of the ineligible concept to confer patent-eligibility. Our reviewing court has stated that it is not enough for eligibility that “the techniques claimed are ‘[g]roundbreaking, innovative, or even brilliant,’” or are “novel and nonobvious” because “‘[a] claim for a new abstract idea is still an abstract idea.’” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (citations omitted). Appeal 2020-004778 Application 15/071,432 14 Referring again to the claimed displaying of a hypergraph, limitation (c) recites “displaying . . . the hypergraph on a display system.” Appeal Br. 14. We interpreted this step broadly as a mental process, as discussed above in Step 2A, Prong 1. However, even if we were to interpret this limitation narrowly such that the hypergraph is stored in a memory in an electronic format and displayed by the display system, this limitation still would not integrate the recited abstract ideas into a practical application. Even under such a narrow interpretation, the displaying step of limitation (c) does not add any meaningful limits to the recited abstract idea because this limitation reasonably may be characterized as being directed to the insignificant post-solution activity of outputting data. Such broadly recited outputting of data that is not integrated into the claim as a whole is insignificant post-solution activity. See Parker v. Flook, 437 U.S. 584, 590 (1978) (“The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.”); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015) (“Nor does the claims’ recitation of ‘present[ing] [offers] to potential customers’ . . . provide a meaningful limitation on the abstract idea.”). As such, even if we consider limitation (c) as an additional element under prong 2 rather than as reciting an abstract idea under prong 1, limitation (c) recites at most the insignificant extra-solution activity of outputting data. In summary, Appellant fails to identify any way in which an additional element (rather than the abstract idea), whether alone or in combination, reflects an improvement in any technical field, requires a particular machine integral to the claim, transforms the article to a different Appeal 2020-004778 Application 15/071,432 15 state, or otherwise applies the judicial exception in some meaningful way beyond generally linking the use of the judicial exception to a particular environment (e.g., identifying skills in an organization). See MPEP § 2106.05(a)–(h). We, therefore, determine claim 10 does not integrate the abstract idea into a practical application and, thus, is directed to a judicial exception. Guidance Step 2B (Inventive Concept) Finally, having concluded that claim 10 is “directed to” a judicial exception, we turn to whether the claim provides an “inventive concept,” i.e., whether the additional elements, individually and as an ordered combination, amount to “significantly more” than the judicial exception itself. Guidance, 84 Fed. Reg. at 56. To determine whether the claim provides an inventive concept, the additional elements are considered— individually and in combination—to determine whether they (1) add a specific limitation beyond the judicial exception that is not “well- understood, routine, conventional” in the field or (2) simply append well- understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Id. The Examiner determines that the generically recited computer, whether considered separately or in combination, does not add significantly more because “[g]eneric computer components recited as performing generic computer functions amount to no more than implementing the abstract idea with a computerized system” and “[t]herefore, the claim does not amount to significantly more.” Final Act. 9. Appellant argues that “[d]isplaying the hypergraph on a display system to visualize influences on skills in the organization is a concrete, Appeal 2020-004778 Application 15/071,432 16 actionable step with real-world consequences that facilitates decision making not otherwise possible without such concrete visualization of information.” Appeal Br. 12. Appellant’s argument based on displaying a hypergraph unpersuasively focuses on the abstract idea. Appellant has not identified any additional element recited in claim 10 that is not well-understood, routine, and conventional. Claim 10 recites that the hypergraph is represented by “a computer system.” Appeal Br. 14. The Specification indicates the claimed computer system is conventional hardware. See Spec. ¶ 57 (The computer system may be any “of a computer, a server computer, a tablet, or some other suitable data processing system”). Also, the Specification does not describe the particulars of the additional element, thereby indicating the computer system is sufficiently well-understood in the art. See Spec. ¶¶ 57, 58 and Fig. 1. Thus, the additional element of a computer system is well-understood, routine, or conventional in the field, and fails to provide an “inventive concept,” when considered individually or as an ordered combination. Final Act. 13–14; Ans. 7; see Spec. ¶ 31 We, therefore, agree with the Examiner’s determination that claim 10 does not include additional elements that are sufficient to amount to significantly more than the judicial exception, whether the claim elements are considered individually or as an ordered combination. Final Act. 8–9. The recited hardware adds nothing more than well-understood, routine, conventional activities, specified at a high level of generality, to the application of one or more longstanding human activities and mental processes. See MPEP § 2106.05(d)(II)(ii). Appeal 2020-004778 Application 15/071,432 17 Accordingly, we are not persuaded that exemplary claim 10 recites patent-eligible subject matter and we sustain the rejection of claims 10–13, 16–18, and 20–34 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/ Basis Affirmed Reversed 10–13, 16–18, 20–34 101 Eligibility 10–13, 16–18, 20–34 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 Copy with citationCopy as parenthetical citation