Bradley Paul. Smith et al.

Patent Trials and Appeals Board

Oct 30, 2019

12776569 - (D) (P.T.A.B. Oct. 30, 2019)

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.
12/776,569 05/10/2010 BRADLEY PAUL SMITH 301151-00002 2617
28960 7590 10/30/2019
HAVERSTOCK & OWENS LLP
162 NORTH WOLFE ROAD
SUNNYVALE, CA 94086
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
10/30/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRADLEY PAUL SMITH and SANFORD G. KULKIN
____________

Appeal 2018-003662
Application 12/776,569
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MOHANTY, 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 1–21. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as The Institute for
Motivational Living. Appeal Br. 1.
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THE INVENTION
The Appellant’s claimed invention is directed to facilitating a match
between an employer and job seekers for a job opening using a job seeker’s
performance quotient, which uses normalized assessment data, to a position
quotient (Spec. 6:9–12). Claim 1, reproduced below with the italics added,
is representative of the subject matter on appeal.

1. A computerized method for a facilitator to a match an employer
with at least one job opening to job seekers, wherein said employer
has a set of position preferences, said job seekers have identifiable
suitability data, said suitability data including normalized assessment
data, said method performed on said facilitator’s computer, said
method comprising the steps of:
determining on a computer a position quotient based on said
position preferences;
deriving on a computer a performance quotient for each job
seeker, said performance quotient including normalized assessment
data;
comparing on a computer each said performance quotient to
said position quotient; and
ranking on a computer each said job seeker based on the
comparison of said performance quotient to said position quotient.

THE REJECTION
The following rejection is before us for review:
Claims 1–21 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.

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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 12–15; Reply Br. 2–
5). The Appellant argues further that the claim is “significantly more” than
the alleged abstract idea (Appeal Br. 15, 16; Reply Br. 5, 6).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–10; Ans. 3–8).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
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Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] 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.” (see Guidance at 54; see also
MPEP § 2106.05(a)–(c), (e)–(h)).
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:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance at 56.
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation [] fail[s] to
transform that abstract idea into a patent-eligible invention.” Id.
The Specification states that the invention generally relates to a
method of matching job seekers and employers (Spec., page 1, lines 5-7).
Here, the Examiner has determined that claim 1 is “directed to the abstract
idea of matching an employer with a job seeker” (Ans. 4). We substantially
agree with the Examiner. We determine that the italicized limitations of
claim 1 shown above (i.e., “determining . . . a position quotient based on
said position preferences”; “deriving . . . a performance quotient for each job
seeker, said performance quotient including normalized assessment data”
“comparing . . . each said performance quotient to said position quotient; and
“ranking . . . each said job seeker based on the comparison of said
performance quotient to said position quotient”), broadly, but reasonably,
construed, recite matching employers with job seekers, i.e., managing
relationships, which is a certain method of organizing human activity and,
thus, a judicial exception. This concept also is similar to other concepts that
have been held by the Federal Circuit to be patent ineligible, such as “a
process that employs mathematical algorithms to manipulate existing
information to generate additional information”3, i.e., mathematical

3 See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014).
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concepts, and collecting information, analyzing it, and displaying certain
results of the collection and analysis 4, i.e., a mental process, which also are
abstract ideas.
Thus, we consider these limitations of claim 1 to recite a judicial
exception as identified above. Next, we determine whether any additional
elements of claim 1, individually or in combination, integrate the judicial
exception into a practical application. Here, the only additional element
recited in claim 1 besides the abstract idea is “a computer.” The
Specification describes the “computer” as a well known device for
performing the functions recited in the claim (see, e.g., Spec. 12:6–14), and
not, for example, as a particular machine that integrates the judicial
exception into a practical application.
Indeed, claim 1 does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a physical
transformation. Rather, we determine that nothing in the claim 1 imposes a
meaningful limit on the judicial exception, such that the claims are more
than a drafting effort to monopolize the judicial exception.
For example, in claim 1 the steps of [1] “determining … a position
quotient based on said position preferences”, [2] “deriving … for each job
seeker, said performance quotient”, [3] “comparing … said performance
quotient to said position quotient”, and [4] “ranking … each said job seeker
based on the comparison of said performance quotient to said position
quotient”, considered individually and as an ordered combination, are
merely steps performed by a generic computer that do not improve computer

4 See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016).
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functionality. That is, these recited steps [1]–[4] “do not purport to improve
the functioning of the computer itself” but are merely generic functions
performed by a conventional processor. Likewise, these same steps [1]–[4]
listed above do not improve the technology of the technical field and merely
use generic computer components and functions to perform the steps. Also,
the recited method steps [1]–[4] above do not require a “particular machine”
and can be utilized with a general purpose computer. Further, the claim as a
whole fails to effect any particular transformation of an article to a different
state. The recited steps [1]–[4], considered individually and as an ordered
combination, fail to provide meaningful limitations to limit the judicial
exception and rather are mere instructions to apply the method to a generic
computer.
Thus, the additional claimed elements have not been shown to
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55; see also MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The claim fails to add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field. As described
above, the only limitation besides the abstract idea is the claimed
“computer.” But Appellant’s Specification makes clear that this computer
“is well known.” Spec. 12:6. For example, the computer uses conventional
computer components such as a processor, memory, storage medium, and
the Internet in a conventional manner. See id. at 12:6–21. We are not
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persuaded that the Examiner erred in determining that claim 1 requires a
computer to implement the method but that the computer functions in a
manner that is well-understood, routine, and conventional in the field. See
Final Action 4. In view of the above, the Appellant has not persuasively
argued that the recitations of a computer in claim 1 are not recitations of a
general purpose computer known to perform similar functions in a well-
understood manner. Here, the claim has not been shown to be “significantly
more” than the abstract idea.
For these above reasons the rejection of claim 1 is sustained.
The Appellant in the Appeal Brief at page 16 argues that the
limitations of claim 4 provide significantly more than the abstract concept
but we disagree with this contention. The argued claim limitations at page
16 of the Appeal Brief are merely steps that could be performed by a generic
processor and do not add “significantly more” to the abstract concept of
claim 1 from which it depends. For this reason, the rejection of claim 4 is
sustained.
The Appellant argues that the Examiner has not performed a proper
analysis of the remaining claims individually (Appeal Br. 8, 12). However,
the Appellant has failed to present any separate arguments for specific claim
language in the remaining claims. Regardless, a review of the remaining
claims has determined that they are directed to similar subject matter as
claim 1 and the rejection of these claims is sustained for the same reasons
given above.

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CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1–21 under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED