D2L Corporation

Patent Trials and Appeals Board

Aug 27, 2020

14729526 - (D) (P.T.A.B. Aug. 27, 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.
14/729,526 06/03/2015 Jugoslav Bilic 20628-P46459US00 5978
1059 7590 08/27/2020
BERESKIN & PARR LLP/S.E.N.C.R.L., s.r.l.
40 KING STREET WEST
40TH FLOOR
TORONTO, ONTARIO M5H 3Y2
CANADA
EXAMINER
THAI, XUAN MARIAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
ipprocessingcentre@bereskinparr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUGOSLAV BILIC, STEPHEN JOHN MICHAUD, MARTIN
DAVID GOODENOUGH BAYLY, and RYAN CLAYTON OGG
Appeal 2020-001710
Application 14/729,526
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
HILL, 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 1–18. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as D2L Corporation.
Appeal Br. 2.
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BACKGROUND
Appellant’s invention relates to a method for providing a learning path
for an electronic learning system. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for providing a learning path for an electronic
learning system, the electronic learning system including a
processor and at least one memory in electronic communication
with the processor, the at least one memory storing one or more
learning objectives, the method comprising:
retrieving, by the processor, from the one or more learning
objectives, a set of learning objectives assigned to the learning
path;
for each learning objective of the set of learning
objectives, selecting, by the processor, from a plurality of
resources accessible to the electronic learning system, one or
more resources assigned a relevance score at least satisfying a
relevance threshold for that learning objective, the relevance
score representing an estimated degree of correlation between
that learning objective and a content of the respective resource,
and the relevance threshold indicating a minimum relevance
score required for a resource to be selected for a learning
objective;
generating, by the processor, an initial learning path using
the selected one or more resources;
identifying, by the processor, one or more evaluation type
resources from the selected one or more resources, each
evaluation type resource comprises an interaction for evaluating
a proficiency of a user in relation to at least a subset of learning
objectives of the set of learning objectives;
monitoring, by the processor, a feedback usage indicator
for each evaluation type resource of the selected one or more
resources, the feedback usage indicator being stored in a storage
component accessible to the electronic learning system and the
feedback usage indicator representing an amount of user
interactions with that evaluation type resource; and
updating, by the processor, the initial learning path to
generate the learning path based on, at least, the feedback usage
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indicator of each evaluation type resource of the selected one or
more resources, the updating of the initial learning path
comprising determining a system learn value for a resource
associated with the feedback usage indicator, comparing the
system learn value to a learn value threshold, and determining to
update the initial learning path based on the comparison of the
system learn value to the learn value threshold, wherein the
system learn value comprises a representation of a likelihood that
a corresponding resource will assist a user in achieving a
corresponding learning objective.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Knutson US 2004/0161734 A1 Aug. 19, 2004
Packard US 2011/0039249 A1 Feb. 17, 2011
Supanc US 2015/0006454 A1 Jan. 1, 2015

REJECTIONS2
I. Claims 1–18 stand rejected under 35 U.S.C. § 101 as being
directed to an abstract idea without significantly more. Final Act. 3.
II. Claims 1–18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Packard, Knutson, and Supanc. Final Act. 5.

OPINION
Rejection I; 35 U.S.C. § 101
Appellant argues all of the claims together in contesting the rejection
under 35 U.S.C. § 101. Appeal Br. 6–8. Accordingly, we decide the appeal

2 A rejection of claims 1–18 under 35 U.S.C. § 112(b) as being indefinite is
withdrawn. See Advisory Act. 1, mailed July 1, 2019; see also Final Act. 3.
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of this rejection on the basis of claim 1, with claims 2–18 standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select
a single claim to decide the appeal as to a single ground of rejection of a
group of claims argued together).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int'l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. The
first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’
to determine whether there are additional elements [that] ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78).
In the Final Action, the Examiner determined that the claims,
considering all elements both individually and in combination, do not
amount to significantly more than the abstract idea of “collecting
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information, analyzing it, and displaying certain results of the collection and
analysis,” similar to the concept found to be abstract in Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Final Act. 3–5.
The Examiner further determined that any additional elements, or
combinations thereof, amount to no more than a recitation of “generic,
conventional, and well-known computing elements” (e.g., a processor and a
memory) performing generic computer functions that are “well-known,
routine, and conventional” activities previously known to the pertinent
industry that fail to transform the abstract idea into a patent eligible
application of the abstract idea. Id. at 5.
Appellant argues that, subsequent to the Final Action, the USPTO
issued the 2019 Revised Patent Subject Matter Eligibility Guidance (2019
Subject Matter Guidance), which provides that a claim is not “directed to” a
judicial exception if the judicial exception is integrated into a practical
application. Appeal Br. 6. According to Appellant, even if the claims recite
a judicial exception, they recite “a practical application of the judicial
exception.” Id. at 7. Specifically, Appellant asserts that generation of a
learning path from an initial learning path “is a practical application of any
judicial exception applied, relied on or used.” Id. at 8.
The Examiner responds that “the 101 rejection is maintained” because
the claims are “directed towards an abstract idea in the form of certain
methods of organizing human activity: managing personal behavior or
relationships or interactions between people (including social activities,
teaching, and following rules or instructions),” which is consistent with the
2019 Subject Matter Guidance. Ans. 4. The Examiner contends that
implementing “the learning path as an electronic learning system (i.e. on a
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computer) is not a practical application because . . . the recitation is at a
high level such that it amounts to no more than mere instructions to
implement an abstract idea on a computer.” Id. According to the Examiner,
implementation of the learning path on an electronic learning system
encompasses a generic and conventional implementation that is not a
particular machine, and there is no indication that implementing a learning
path would improve a computer itself. Id. The Examiner concludes that the
method “merely uses a computer as a tool in a generic and conventional
capacity to perform the judicial exception, which is not a practical
application.” Id.
Appellant replies that inclusion of “additional elements” beyond the
abstract idea integrates the abstract idea into a practical application. Reply
Br. 3. According to Appellant, when the claim is considered as a whole,
“the additional elements recited in the claims in question (e.g. a processor
and at least one memory in electronic communication with the processor) do
not merely add generic computer activity to an abstract idea.” Id. at 3. In
particular, Appellant argues that the non-generic activity includes a
processor that identifies resources, monitors a feedback usage indicator for
each of the resources, and updates the initial learning path to generate the
learning path based on the feedback usage indicator and type of resources.
Id. at 4. Appellant asserts, moreover, that “the claims in question improve
the performance of the recited computing system by providing for efficient
creation of a learning path for an electronic learning system.” Id.
Specifically, Appellant asserts that by the electronic learning systems
updating the initial learning path based on the feedback usage indicator, “the
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processor's involvement is not merely a field of use and therefore integrates
the abstract idea into a practical application.” Id.
We have reviewed the eligibility of the pending claims through the
lens of the 2019 Subject Matter Guidance, and we are not persuaded that the
Examiner erred in concluding that the pending claims are directed to a
judicial exception without significantly more.
Under that guidance, in conducting step one of the Alice framework,
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
interactions such as a fundamental economic practice, or mental processes);
and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)(h)).
Step 1 -- Statutory Category
Claim 1 recites a method for providing a learning path and, therefore,
is a process. See Appeal Br. 14 (Claims App.).
Step 2A, Prong 1
The 2019 Subject Matter Guidance identifies three key concepts
identified as abstract ideas: (a) mathematical concepts including
“mathematical relationships, mathematical formulas or equations,
mathematical calculations”; (b) certain methods of organizing human
activity, such as “fundamental economic principles or practices,”
“commercial or legal interactions,” and “managing personal behavior or
relationships or interactions between”; and (c) mental processes including
“observation, evaluation, judgment, [and] opinion.”
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Here, claim 1 is directed to a method for “providing a learning path
for an electronic learning system,” where “users engage in education related
activities using computers and other computing devices.” Spec. ¶¶ 1, 2.
Claim 1 recites, inter alia, a processor” 1) generating an initial
learning path, 2) identifying resources, 3) monitoring a feedback usage
indicator of the resources, and 4) updating the initial learning path to
generate the learning path based on the feedback usage indicator to assist a
user in achieving a corresponding learning objective. According to the
Specification, claim 1 recites an improved teaching method, because
“teachers in traditional learning environments are unable to determine the
effectiveness of the curriculum and are limited in their ability to adapt the
curriculum to the different needs of the learners.” Spec. ¶ 4.
An improved teaching method, as recited in claim 1, amounts to
“managing personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or instructions),”
which is one of certain methods of organizing human activity. See 2019
Subject Matter Guidance at 52. Such methods of organizing human activity
are abstract ideas. Id. Thus, claim 1 recites an abstract idea, one of the
judicial exceptions. See Alice, 573 U.S. at 216. Accordingly, the outcome
of our analysis under Step 2A, Prong 1, requires us to proceed to Step 2A,
Prong 2. See 2019 Subject Matter Guidance.
Step 2A, Prong 2
We next consider whether the claimed method includes additional
elements that integrate the judicial exception into a practical application.
The Examiner finds that the claimed memory and processor perform generic
computer functions, and the method “merely uses a computer as a tool in a
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generic and conventional capacity to perform the judicial exception, which is
not a practical application.” Ans. 4.
We agree with the Examiner that the memory and processor are each
recited in a generic manner. We find no indication in Appellant’s
Specification, nor does Appellant direct us to any indication, that the
claimed invention is implemented using other than generic devices. The
Specification discloses “a data storage component (including volatile
memory or non-volatile memory or other data storage elements or a
combination thereof), and lists various known data storage components
including “RAM, ROM, one or more hard drives, one or more flash drives
or some other suitable data storage elements such as disk drives …
databases, such as a relational database (e.g., a SQL database),” which
perform the known function of storing data. Spec. ¶¶ 45, 86. The
Specification also discloses that the “processor may be any suitable
processors, controllers or digital signal processors that can provide sufficient
processing power depending on the configuration, purposes and
requirements of the electronic learning system 30.” Id. ¶ 84. The operations
(generating an initial learning path, identifying resources, monitoring a
feedback usage indicator of the resources, and updating) performed by the
processor are generic computer functions of generating data (the resources
can include text data, video data, image data, and one or more combinations
thereof) (Spec. ¶ 107), monitoring the received data, and updating the data.
Thus, the claimed invention does not improve the functioning of the
computer (processor) or memory. “[A]n improvement to the information
stored by a database is not equivalent to an improvement in the database’s
functionality.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287–88
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(Fed. Cir. 2018). Nor does the claimed invention use a particular, or special,
machine. In other words, the claims “are not tied to any particular novel
machine or apparatus” capable of rescuing them from the realm of an
abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014).
In summary, we do not find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention, or otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the USPTO’s “2019 Revised Patent Subject Matter
Eligibility Guidance,” 84 Fed. Reg. 50, 55 (January 7, 2019).
Step 2B
In Step 2B, we determine whether the claim adds a specific limitation,
beyond the judicial exception, that is not “well-understood, routine,
conventional” in the field. See 2019 Subject Matter Guidance. The portions
of claim 1 that Appellant asserts are directed to “additional elements recited
in the claims in question (e.g. a processor and at least one memory in
electronic communication with the processor)” (Reply Br. 3) are generic
devices that do not perform other than well-known, routine, and
conventional activity, as discussed above.
Although claim 1 specifically limits, in various ways, the recited
update of the learning path, and, therefore, would seem to exclude certain
other methods of assisting a user in achieving a corresponding learning
objective, we do not agree that claim 1 recites anything significantly more
than the abstract ideas discussed above in Step 2A. In particular, the various
actions recited in claim 1 that differentiate the recited method from other
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computer learning methods relate to the abstract idea, not to an innovation of
the kind that benefits the claimed subject matter under a Step 2B analysis.
For the above reasons, the recited elements of claim 1, considered
individually and as an ordered combination, do not constitute an “inventive
concept” that transforms independent claim 1 into patent-eligible subject
matter. See Alice, 573 U.S. at 217. On this record, we affirm the
Examiner’s § 101 rejection of claim 1. Claims 2–18 fall with claim 1.
Rejection II; 35 U.S.C. § 103
Similar to the rejection under 35 U.S.C. § 101, Appellant argues all of
the claims together in contesting the rejection under 35 U.S.C. § 103.
Appeal Br. 9–13. Accordingly, we decide the appeal of this rejection on the
basis of claim 1, with claims 2–18 standing or falling with claim 1.
The Examiner finds that Packard discloses most of the steps of the
method of claim 1, including selecting resources (see Final Act. 6), but does
not disclose assigning the resources a relevance score that satisfies a
relevance threshold. Final Act. 6–8. The Examiner finds that Knutson
discloses this limitation, and reasons that it would have been obvious to have
modified the method of Packard to have relevancy scores, “to save users
significant time by focusing the user’s attention only on documents
considered relevant.” Id. at 8. The Examiner also finds that, although
Packard updates the learning path, Packard does not do so based on a
comparison of the system learn value to a learn value threshold. Id. at 8–9.
Nonetheless, the Examiner finds that Supanc discloses updating based on
comparing a system learn value to a learn value threshold. Id. at 9. The
Examiner concludes that it would have been obvious to have modified the
method of Packard to recommend advancement based on comparison to a
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recommendation threshold, “to provide the best educational path for the
user.” Id.
Appellant argues that the Examiner’s reasons for combining the
references are insufficient. Appeal Br. 10. Specifically, Appellant asserts
that the Examiner’s reason for combining each of Knutson and Supanc with
Packard is not supported by evidence. Id. at 12. Moreover, Appellant
asserts that the Examiner’s rationale for the combination is no more than “a
generic assertion” that Packard could be improved, without explaining why
one of ordinary skill would combine the references. Id. Thus, according to
Appellant, the rejection appears to be based on impermissible hindsight
because “the Examiner has failed to articulate sufficient reasons with a
satisfactory rational underpinning to support a legal conclusion of
obviousness.” Id. at 13.
The Examiner responds that the combination of Packard with each of
Knutson and Supanc is legally sound and supported by evidence. Ans. 5.
Specifically, the Examiner contends that for the combination of Packard and
Knutson, the offered motivation, “to save users significant time by focusing
the user’s attention only on documents considered relevant,” comes directly
from Knutson. Id. (citing Knutson ¶ 63). Similarly, for the combination of
Packard and Supanc, the Examiner contends that the offered motivation is
supported by the disclosure of Supanc as well as the rationales identified by
the Supreme Court in KSR. Id. (citing Supanc ¶ 48; KSR lnt'I Co. v. Teleflex
Inc., 550 U.S. 398, 415–421 (2007)). In particular, the Examiner states that
the offered motivation, “to provide the best educational path for the user,” is
based on Supanc’s disclosure of connecting via different pathways and
attaining a higher likelihood of success. Id. The Examiner notes that the
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Supreme Court held in KSR that using a known technique, in the same way,
with predictable results supports an obviousness conclusion. Id.
The Examiner has the better argument. Knutson and Supanc, not
Appellant’s own disclosure, support the Examiner’s reasoning. Knutson
discloses a significant time savings “by focusing the user’s attention to only
those paragraphs in a document or documents that are considered relevant.”
Knutson ¶ 63; see also Final Act. 8. Given this disclosure in Knutson, we
disagree with Appellant’s contention that impermissible hindsight was
employed by the Examiner. Given that Knutson’s method provides
correlated electronic educational material to a user “in a manner to
accommodate the learning preferences and/or proclivities of the user,” the
Examiner’s reasoning is supported by a rational underpinning. In a similar
manner, Supanc discloses selecting a node or learning objective (see Supanc
¶ 44) in which a user can meet or exceed the recommended threshold so that
completion “will increase the likelihood of success sufficiently to allow the
user to advance to the next node.” Supanc ¶ 39; see also Final Act. 9.
Given this disclosure in Supanc, we disagree with Appellant’s contention
that impermissible hindsight was employed by the Examiner in combining
Packard and Supanc. In addition, Appellant has not persuaded us that the
function of comparing a likelihood of success with a recommendation
threshold, as taught by Supanc, was unknown in the art or that the
Examiner’s proposed modification of Packard would yield other than
predictable results to the ordinary artisan.
For the reasons explained above, we sustain the rejection of
independent claim 1. Claims 2–18 fall with claim 1.
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CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18 101 Eligibility 1–18
1–18 103 Packard, Knutson,
Supanc
1–18
Overall
Outcome
1–18

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