D2L CORPORATION

Patent Trials and Appeals Board

Dec 29, 2021

2021002457 (P.T.A.B. Dec. 29, 2021)

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.
13/832,553 03/15/2013 Kenneth CHAPMAN K8001235US 9002
34236 7590 12/29/2021
GOWLING WLG (CANADA) LLP
345 King Street West
Suite 600
KITCHENER, ONTARIO N2G0C5
CANADA
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/29/2021 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):
JEFF.WONG@GOWLINGWLG.COM
VAL.COTTRILL@GOWLINGWLG.COM
Waterloo.IP@gowlingwlg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH CHAPMAN
__________________

Appeal 2021-002457
Application 13/832,553
Technology Center 3600
____________________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–17, 19, and 20, which are all the pending
claims.2 See Appeal Br. 1, 5. 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. Appellant
identifies D2L Corporation as the real party in interest. Appeal Br. 3.
2 Claim 18 is cancelled. See Appeal Br. 32 (Claims App).
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CLAIMED SUBJECT MATTER
The claims relate to systems and methods for automating collection of
information such as accreditation requirements. Spec. ¶¶ 5, 38. A common
language or nomenclature is developed so all user content is designated with
a single naming convention that conforms with the terminology used by an
accreditation board. Id. ¶ 38. Then, user content can be reached using the
common language and a list of designations based on accreditation board
requirements to collect information for submission. Id. ¶¶ 40–43.
Claims 1, 13, and 17 are independent. Claim 1 recites:
1. A method of collecting submission information in an
academic institution comprising:
obtaining one or more requirements for an accreditation
board;
determining one or more designations for use in a
common language, wherein the one or more designations are
determined based at least in part on the one or more
requirements;
developing the common language for all information
within the academic institution, wherein the common language
is developed based at least in part on the one or more
designations, and wherein the common language comprises one
or more keywords used to describe user content generated in
connection with the one or more designations;
applying the common language to one or more pieces of
user content stored in a content database associated with a
networked teaching environment, the content database stored in
a non-transitory computer readable medium;
searching, by a processor, the content database associated
with the networked teaching environment and identifying, by
the processor, the submission information for submission to the
accreditation board from the pieces of user content, wherein the
identified submission information is determined based at least
in part on the one or more keywords respectively associated
with the one or more designations;
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retrieving, by the processor, the identified submission
information;
removing, by the processor, redundant or superfluous
information from the identified submission information,
wherein submission information is determined to be redundant
or superfluous information based at least in part on the one or
more keywords used to describe the pieces of user content; and
sending the remaining submission information to the
accreditation board.
Appeal Br. 28 (Claims App.).
REJECTIONS
Claims 1–17, 19, and 20 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 13–17 are rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement.
Claims 13–17 are rejected under 35 U.S.C. § 112, second paragraph,
for being indefinite.
Claims 1, 2, 7–11, 13–17, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yaskin,3 Camarillo,4 and Brockway.5
Claims 3–6 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yaskin, Camarillo, Brockway, and Waelti.6
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yaskin, Camarillo, Brockway, and Palmer.7

3 US 2006/0241993 A1, published October 26, 2006.
4 US 2003/0041068 A1, published February 27, 2003.
5 US 2011/0093471 A1, published April 21, 2011, 2007.
6 US 2007/0282598 A1, published December 6, 2007.
7 US 2006/0149590 A1, published July 6, 2006.
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ANALYSIS
Eligibility of Claims 1–17, 19, and 20
Appellant argues the claims as a group. See Appeal Br. 12–18. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Regarding claim 1, the Examiner determines that steps of obtaining
requirements, determining designations for use in a common language,
developing the common language, applying the common language to
information stored in a database, searching the database for identified
information, retrieving the identified information, removing redundant
information, and sending the remaining information recite mental processes
that can be performed in the human mind but for reciting generic computer
components. Final Act. 4. The Examiner also determines that developing a
common language encompasses activities of a user thinking about the words
to use to describe user content and the other limitations can be performed by
a user manually searching a database or a filing cabinet of information. Id.
The Examiner determines that the additional elements of a processor
and a database are recited at a high level of generality as generic components
that apply the abstract idea in a generic computer environment. Id. at 5. The
Examiner also determines that these additional elements do not impose a
meaningful limit on practicing the abstract idea to integrate it into a practical
application. Id. The Examiner determines that “sending” and “retrieving”
limitations may be considered insignificant extra-solution activity. Id.
The Examiner also determines that applying the judicial exception
using a generic computer component cannot provide an inventive concept
because the claims append well-understood, routine, and conventional
activities previously known in the industry. Id.
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Principles of Law
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
35 U.S.C. § 101. Laws of nature, natural phenomena, and abstract ideas are
not patentable. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To distinguish patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications, we first
determine whether the claims are directed to a patent-ineligible concept. Id.
at 217. If they are, we consider the claim elements, individually and as an
ordered combination, to determine if any additional elements provide an
inventive concept sufficient to ensure that the claims in practice amount to
significantly more than a patent on the ineligible concept. Id. at 217–18.
The USPTO has issued guidance about this framework. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”). To determine if a claim is “directed to” an abstract
idea, we evaluate whether the claim recites: (1) any judicial exceptions,
including certain groupings of abstract ideas listed in the Revised Guidance
(i.e., mathematical concepts, certain methods of organizing human activities
such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a practical
application.8 Id. at 52–55.

8 “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.” Revised
Guidance, 84 Fed. Reg. at 54.
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If a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, we consider whether the claim
(3) provides an inventive concept such as by adding a limitation beyond a
judicial exception that is not “well-understood, routine, conventional” in the
field or (4) appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, 84 Fed. Reg. at 56.
Step 1
We agree with the Examiner that claim 1 recites a method, which is a
statutory category, namely, a process. See 35 U.S.C. § 101; Final Act. 4.
Alice Step One
Revised Guidance Step 2A, Prong One:
Do the Claims Recite a Judicial Exception?
We agree with the Examiner that claim 1 recites steps that can be
performed in the human mind or with pen and paper and therefore fall within
the mental processes category of abstract ideas. Revised Guidance, 84 Fed.
Reg. at 52; Final Act. 4; Ans. 3. By organizing records of human activity of
an entity, claim 1 also recites certain methods of organizing human activity
within the abstract idea category. Revised Guidance, 84 Fed. Reg. at 52
The focus of claim 1 is on developing a common nomenclature (i.e., a
“common language” of “keywords”) that is based on the requirements of an
accreditation board and using that common language to index (“designate”)
user content stored in a database so that the database can be searched for
information to submit to the accreditation board using the keyword(s) of a
single naming convention. See Spec. ¶¶ 1, 5, 8–10, 30, 33, 38, 40, 41. The
title of the application reflects this focus as SYSTEMS AND METHODS
FOR AUTOMATING COLLECTION OF INFORMATION.”
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Creating an index and using that index to search for and retrieve data
in a database is activity that organizes and access records through creation of
an index-searchable database. It “includes longstanding conduct that existed
well before the advent of computers and the Internet.” Intellectual Ventures
I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017) (explaining
“a hardcopy-based classification system (such as library indexing system)
employs a similar concept as the one recited by the ’434 patent. There,
classifiers organize and cross-reference information and resources (such as
books, magazines, or the like) by certain identifiable tags, e.g., title, author,
subject. Here, tags are similarly used to identify, organize, and locate the
desired resource.”). Claim 1 here similarly develops a common language of
keywords based on designations of accreditation requirements and applies
the designations as tags to user content in a database so the content can be
searched by keywords of the designations to retrieve desired information for
submission to an accreditation board. The Specification indicates that new
user content may be named and stored by using designations of the common
language, and stored user content may be updated based on the designations
of the common language so that the user content may be searched by using
specific keywords of designations of the common language. Spec. ¶¶ 41, 43.
The method is similar to other concepts that recite abstract ideas. For
example, a method of indexing data into a database as parameterized items
presented summary comparison information before users input data so they
could compare parameters and values used to classify similar data into the
database. BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1286 (Fed.
Cir. 2018) (“[T]he claim’s ‘focus’ is guiding database users by presenting
summary comparison information to users before they input data.”).
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The United States Court of Appeals for the Federal Circuit explained
This is not a method “necessarily rooted in computer
technology in order to overcome a problem specifically arising
in the realm of” wide access databases. . . . It amounts to
having users consider previous item descriptions before they
describe items to achieve more consistent item descriptions.
Whether labeled as a fundamental, long-prevalent practice or a
well-established method of organizing activity, this qualifies as
an abstract idea.
BSG, 899 F.3d at 1286 (citation omitted).
Here, claim 1 applies a “common language” based on designations
and comprising keywords used to describe user content generated based on
one or more designations. Appeal Br. 28 (Claims App.). No technical
details are recited for this process of applying the common language to user
content. The Specification indicates only that user content is designated by
using a single naming convention of terminology that reflects or parallels the
terminology of an accreditation board so that simple key word searches may
be used to obtain the information required for accreditation. Spec. ¶¶ 38, 41.
Claim 1 is more abstract than the claims in Erie and BSG. Even if applying
a common language to user content encompasses assigning designations and
keywords to individual data items, such application merely indexes the user
content similar to the tags, parameters and values in Erie without providing
historical usage information to guide the application as in BSG. As such, it
recites the abstract idea identified above. See also PersonalWeb Techs. LLC
v. Google LLC, 8 F.4th 1310, 1316 (Fed. Cir. 2021) (using a content-based
identifier for the claimed data-management functions of marking, retrieving,
and delivering copies of data items recited mental processes that can be
performed using a pencil and paper).
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PersonalWeb held that “the use of a content-based identifier” was
held to be abstract in Erie. Id. at 1316 (“There, we addressed claims to
‘search [a] database using an index,’ in which ‘every record in the database
is associated with one or more descriptive terms’ organized using ‘category
tags’ for ‘grouping of similar terms’ and ‘domain tags’ for ‘grouping of
similar categories.’”) (quoting Erie, 850 F.3d at 1326). In Erie, the claims
created an index by defining a plurality of XML tags including domain tags
and category tags. Then, it created a metafile corresponding to a first
domain tag and finally a database by providing plural records with each
record having an XML index component. Erie, 850 F.3d at 1326.
Similar claims to methods of classifying and storing data recited the
abstract idea identified above. See In re TLI Commc’ns LLC Patent Litig.,
823 F.3d 607, 613 (Fed. Cir. 2016) (classifying and storing digital images in
an organized manner by attaching dates and times to the images is a method
of organizing human activity); Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (steps
of collecting data, recognizing data in the collection, and storing recognized
data recite steps humans always have performed to organize such data and
activity); see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1355 (Fed. Cir. 2016) (“[S]electing information, by content or source, for
collection, analysis, and display does nothing significant to differentiate a
process from ordinary mental processes, whose implicit exclusion from
§ 101 undergirds the information-based category of abstract ideas.”). Here,
claim 1 similarly collects accreditation requirements, extracts designations
and develops a common language comprising keywords that are applied to
user content to index it for subsequent searches to collect information.
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Nor does searching the content database to identify submission
information take claim 1 out of the abstract realm. Such functions can be
performed as mental processes to search a database, retrieve submission
information, remove redundant information, and send results of the search as
submission information. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (obtaining information about credit
card transactions can be performed by a human who simply reads records of
Internet credit card transactions from a preexisting database even if physical
steps are required (such as entering a query via a keyboard or a mouse) and
making a map of the retrieved credit card numbers can be performed as a
mental process by writing down a list of credit card transactions made from
a particular IP address, and comparing the map of credit card numbers to
Internet transactions can be performed entirely in the human mind as can the
logical reasoning to identify different user names and billing addresses using
the same IP address); West View Research, LLC v. Audi AG, 685 F. App’x
923, 926 (Fed. Cir. 2017) (“These claims do not go beyond receiving or
collecting data queries, analyzing the data query, retrieving and processing
the information constituting a response to the initial data query, and
generating a visual or audio response to the initial data query.”).
Without more, filtering data this way involves the same abstract idea.
See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1348 (Fed. Cir. 2016) (filtering content retrieved from a network is a
longstanding, well-known method of organizing human behavior); Braemer
Mfg., LLC v. ScottCare Corp., 816 F. App’x 465, 470 (Fed. Cir. 2020)
(collecting, classifying, and filtering data to determine a measure of merit is
no more than a mental process that is performable in the human mind).
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Appellant argues that the Office Action has not articulated the specific
abstract idea to which the claims are directed or how such abstract idea is
similar to any concept that the courts have identified as an abstract idea. See
Appeal Br. 13. Appellant also argues that the identified alleged abstract idea
is not similar to any of the concepts that courts have identified as an abstract
idea and is directed to an improvement to computer-related technology by
applying a common language to submit information to an accreditation
board. Id. at 13–14.
The Examiner identified the claimed steps of obtaining requirements,
determining designations using a common language, developing a common
language, applying the common language to database information, searching
the database for and retrieving identified information, removing redundant
information, and sending the remaining information as reciting a method that
can be performed in the human mind as mental processes. Final Act. 4, 28.
Mental processes are a category of abstract idea as indicated by the decisions
discussed above and the Revised Guidance. See Revised Guidance, 84 Fed.
Reg. at 52. Those decisions also held that claims to such mental processes
recited certain methods of organizing human activity as an abstract idea.
Appellant also argues that applying a common language by applying
keywords to define user data changes the data and can’t be accomplished by
human thought processes. In Erie, a method of creating an index-searchable
database involved longstanding conduct that existed well before the advent
of computers and the Internet such as by human classifiers organizing and
cross-referencing information and resources in a system by applying tags
(title, author, subject) to books and magazines to classify data by identifying,
organizing, and locating a desired data resource. Erie, 850 F.3d at 1327.
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Human classifiers have applied a common language of tags to content
items to classify the items as mental processes. See id.; see also Intellectual
Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1339–40 (Fed. Cir.
2017) (organizing documents as data objects by primary record types (PRTs)
and management record types (MRTs) is an abstract idea); TLI, 823 F.3d at
611, 613 (claims drawn to classifying an image and storing the image based
on its classification recited the abstract idea of classifying and storing digital
images in an organized manner as a method of organizing human activity by
attaching classification data such as dates and times to images in order to
store the images in an organized manner). Such classification also recites a
method of organizing human activity. See Cyberfone Sys., LLC v. CNN
Interactive Grp., Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014) (using
categories to organize, store, and transmit data is a well-known concept of
categorical data storage that collects information in classified form and then
separates and transmits it according to its classification).
A common language of designations and keywords tags user content
with an identifier or label. It does not change its character as data. See Elec.
Power, 830 F.3d at 1353 (“Information as such is an intangible”; “collecting
information, including when limited to particular content (which does not
change its character as information), [i]s within the realm of abstract
ideas.”). User content is labelled. See Berkheimer v. HP Inc., 881 F.3d at
1367 (Fed. Cir. 2018) (“That the parser transforms data from source to
object code does not demonstrate non-abstractness without evidence that this
transformation improves computer functionality in some way.”).
Accordingly, we determine that claim 1 recites the abstract idea
identified above.
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Alice Step One
Revised Guidance Step 2A, Prong Two:
Is There an Integration into a Practical Application?
We next consider whether claim 1 recites additional elements that
integrate the abstract idea into a practical application. Revised Guidance,
84 Fed. Reg. at 54. We agree with the Examiner that the generic processor,
database, and networked teaching environment are recited at a high level of
generality and amount to mere instructions to apply the abstract idea using a
generic computer environment without integrating the abstract idea into a
practical application. See Final Act. 5. A generic application of the abstract
idea does not improve computer technology, use a particular machine that is
integral to the claim, or transform or reduce a particular article to a different
state or thing. See Revised Guidance, 84 Fed. Reg. at 55.
The Specification describes the processor and database generically as
components that perform steps of the abstract idea. The database stores the
information that is required for automated collection. Spec. ¶ 46. Similarly,
the processor may have pre-stored instructions used to identify the required
submission information, or it may be provided with instructions for the type
of user content to collect or retrieve. Id. ¶ 47.
Appellant argues that claim 1 of Example 42 of the Subject Matter
Eligibility Examples: Abstract Ideas, issued January 7, 2019 (the “PEG
Examples”), indicates that the claims here are integrated into a practical
application because they convert content lacking a consistent nomenclature
into a state having a consistent nomenclature to solve a technical problem of
user content not being readily identified as pertaining to a particular
accreditation requirement. Appeal Br. 14–15. Appellant asserts that the
“networked teaching environment” is an improved technology. Id. at 15.
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Example 42 includes a method for transmission of notifications when
medical records are updated. PEG Examples, 17. Claim 1 of Example 42 is
a method of storing patient medical information in records in standardized
format, providing remote access to users over a network so the users can
update the information about a patient’s condition by providing information
in a non-standardized format that is converted to the standardized format and
stored and wherein a message is generated automatically with the updated
information about the patient’s condition and sent to users over the network.
Id. at 18. The combination of additional elements of storing information,
providing remote access over a network, converting updated information to a
standardized format, automatically generating a message, and transmitting
the message to users recited a specific improvement over the prior art. Id.
Here, claim 1 recites no comparable features of allowing remote users
to submit data over a network, converting the data to a standardized format,
or then generating and transmitting a message to the users when updated
information about a patient’s condition is received, converted, and stored.
As discussed above under Prong One, the features relied upon for an
integration are features of the abstract idea. They cannot provide additional
elements that integrate that abstract idea into a practical application. See
Revised Guidance, 84 Fed. Reg. at 55 n.24 (the term “additional elements”
is used to refer to claim features, limitations, and/or steps that are recited in a
claim beyond the identified judicial exception); see also Alice, 573 U.S. at
221 (a claim that recites an abstract idea must include additional features to
ensure it is more than a drafting effort designed to monopolize the abstract
idea); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332 (Fed.
Cir. 2015) (same).
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Even if we consider these features as additional elements, they merely
recite result-based activities without any technical implementation details.
As such, “the claims here do not ‘ha[ve] the specificity required to transform
a claim from one claiming only a result to one claiming a way of achieving
it.’” Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317,
1328 (Fed. Cir. 2020) (“Merely claiming ‘those functions in general terms,
without limiting them to technical means for performing the functions that
are arguably an advance,’ does not make a claim eligible at step one.”)
(citations omitted)); see SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1167–68 (Fed. Cir. 2018) (to be eligible, a claim must have the specificity
that transforms it from one claiming only a result to one claiming a way of
achieving the result); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
1343 (Fed. Cir. 2018) (software can make non-abstract improvements to
computer technology but software-based inventions that do not pass § 101
muster fail because “they did not recite any assertedly inventive technology
for improving computers as tools and/or because the elements of the asserted
invention were so result-based that they amounted to patenting the patent-
ineligible concept itself”); Elec. Power, 830 F.3d at 1356 (the essentially
result-focused, functional character of the claim language at issue is a
frequent feature of claims that are held to be ineligible under § 101).
Even if the Specification describes improvements for this process, no
details are claimed. See Ericsson Inc. F.3d 1317, 1325 (“[T]he specification
may be ‘helpful in illuminating what a claim is directed to . . . [but] the
specification must always yield to the claim language’ when identifying the
‘true focus of a claim.’”).

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Appellant also asserts that the conventional method for collecting
submission information did not involve creating and applying a common
language as claimed. Appeal Br. 15. “The ‘novelty’ of any element or steps
in a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–
89, (1981); SAP, 898 F.3d at 1163 (“Nor is it enough for subject-matter
eligibility that the claimed techniques be novel and nonobvious in light of
prior art, passing muster under 35 U.S.C. §§ 102 and 103.”); Synopsys, Inc.
v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim
for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty.”).
Appellant also asserts that removing a portion of the redundant data
from the submission information based on the keywords of the common
languages changes the submission information and provides for a technical
improvement that is more than a mental process. Appeal Br. 15. Appellant
argues that it provides a practical solution to user content being designated
in a manner that is inconsistent with the requirements of the accreditation
board that may cause user content to be duplicated. Id. at 16–17.
The Specification indicates only that “the system aims to create a
common language, or nomenclature between the different departments and
the requirements of the accreditation board so that the collected information
may be quickly reviewed and the number of duplicates may be reduced or
eliminated.” Spec. ¶ 30; see Appeal Br. 7 (citing Spec. ¶¶ 29, 30 as support
for the step of removing redundant or superfluous information). Technical
details are not described (or claimed) for this process, however.
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A person can review retrieved information to identify items of the
retrieved information that are duplicates and remove the duplicates from the
identified submission information before it is sent to an accreditation board.
See PersonalWeb, 8 F.4th at 1317 (determining whether a received content
identifier matches a characteristic of another identifier is a mental process
and marking data for deletion is another way to classify data, which is an
abstract mental process); Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1313–14 (Fed. Cir. 2016) (determining whether a received
content identifier matches a characteristic of other identifiers is a mental
process that people have long performed on received paper mail to discard
letters without opening them based on characteristics of the mail that can be
kept in a person’s head).
Essentially, this step filters out redundant information from retrieved
content. See Intellectual Ventures I LLC v. Erie Indem. Co., 711 F. App’x
1012, 1016 (Fed. Cir. 2017) (“We have found the idea of performing a
search to ferret out sources of unwanted material ‘based on characteristics’
of the source to be directed to an abstract idea.”) (citing Symantec, 838 F.3d
at 1314); see also BASCOM, 827 F.3d at 1348 (“The claims do not merely
recite the abstract idea of filtering content along with the requirement to
perform it on the Internet, or to perform it on a set of generic computer
components. Such claims would not contain an inventive concept.”);
Braemer, 816 F. App’x at 468, 470 (categorizing events is nothing more
than matching characteristics to predefined categories, and discarding
information of a second subset of events that fail to meet a merit criterion
requires nothing more than generic data manipulation and basic data
processing that merely collect, classify, and filter data).
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The claimed method largely automates manual steps that otherwise
would be performed by a person using mental processes. The Specification
indicates that the information to be submitted for accreditation typically is
collected and reviewed by individuals who collect and compile submissions.
Spec. ¶ 30. The individuals may have to review multiple copies of the same
document due to the different naming conventions between departments,
which is a time-consuming process that may cause delays. Id. The claimed
method simply creates a “common language” or “nomenclature” to apply to
the documents and information of different departments using requirements
of an accreditation board. Id. As discussed under Prong One, providing a
common index of tags or identifiers to classify documents or information of
a system such as a library classification system is longstanding conduct that
people always have performed as mental processes to organize and classify
this information and activity. The claims recite no technical improvements
to computers, software, or other technology that are used to develop or apply
a common language beyond the abstract idea identified under Prong One.
Without more, automation of a manual process does not improve
technology. See Alice, 573 U.S. at 225 (“Using a computer to create and
maintain ‘shadow’ accounts amounts to electronic recordkeeping—one of
the most basic functions of a computer.”); OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“At best, the claims describe the
automation of the fundamental economic concept of offer-based price
optimization through the use of generic computer functions.”); Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)
(configuring generic computers to supplant and enhance an abstract manual
process is the sort of invention that is ineligible for patenting).
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“[R]elying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP, 788
F.3d at 1363; see also Mortg. Application Techs., LLC v. MeridianLink, Inc.,
839 F. App’x 520, 526 (Fed. Cir. 2021) (“We have previously held that a
process that can be and has been performed by humans without the use of a
computer, as the prosecution history shows here, is an abstract idea. . . . We
have further held that information storage and exchange is an abstract idea
even when it uses computers as a tool or is limited to a particular techno-
logical environment. . . . The mere automation of the exchange and storage
of information does not render the claims any less abstract.”).
Appellant argues that converting user content to have designations in
the common language transforms the content to a different, standardized
format to solve the technical problem of user content in a database not being
readily identifiable as pertaining to a particular accreditation requirement.
Appeal Br. 14–15. However, no improvement to computer functionality
occurs. See Berkheimer, 881 F.3d at 1367 (“That the parser transforms data
from source to object code does not demonstrate non-abstractness without
evidence that this transformation improves computer functionality in some
way.”); Elec. Power, 830 F.3d at 1355 (“Merely requiring the selection and
manipulation of information––to provide a ‘humanly comprehensible’
amount of information useful to users . . . does not transform the otherwise
abstract processes of information collection and analysis.”); CyberSource,
654 F.3d at 1375 (“The mere manipulation or reorganization of data,
however, does not satisfy the transformation prong.”).
Accordingly, we determine that claim 1 lacks additional elements that
are sufficient to integrate the abstract idea into a practical application.
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Alice, Step Two
Revised Guidance Step 2B:
Do the Claims Include an Inventive Concept?
We next consider whether claim 1 recites any additional elements,
individually or as an ordered combination, to provide an inventive concept.
Alice, 573 U.S. at 217–18. This step is satisfied when limitations involve
more than well-understood, routine, and conventional activities known in the
industry. See Berkheimer v. HP Inc., 881 F.3d at 1367.
Individually, a “processor,” “content database,” and “networked
teaching environment” are conventional computers and components. Their
description in the Specification indicates they are sufficiently well-known
that the particulars of their structure and functionality do not need to be
described. See Memorandum, Subject: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.), dated April 19, 2018.
As an ordered combination, they recite no more than when they are
considered individually. See BSG, 899 F.3d at 1290–91 (“If a claim’s only
‘inventive concept’ is the application of an abstract idea using conventional
and well-understood techniques, the claim has not been transformed into a
patent-eligible application of an abstract idea.”). Using a common language
of “designations” and “keywords” to label user content in a database so it is
more accessible in some abstract way does not provide an inventive concept.
See Cap. One Fin. Corp., 850 F.3d at 1341 (“Although these data structures
[PRTs and MRTs] add a degree of particularity to the claims, the underlying
concept . . . merely encompasses the abstract idea of organizing, displaying,
and manipulating data of particular documents.”); Erie, 850 F.3d at 1328 (an
index of XML tags used to locate data in a database is not patent-eligible).
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As our reviewing court explained in Erie:
The patent admits that an index is simply “a guide that is used
to locate information stored in a database.” . . . Furthermore,
we fail to see how the patentee’s use of a well-known tag, i.e.,
XML tag —to form an index—sufficiently transforms the
claims into a patent eligible invention. While limiting the index
to XML tags certainly narrows the scope of the claims, in this
instance, it is simply akin to limiting an abstract idea to one
field of use or adding token post solution components that do
not convert the otherwise ineligible concept into an inventive
concept. . . . Similarly, the metafiles associated with these tags
do not transform the claim into something beyond a
conventional computer practice for facilitating searches.
Indeed, the ’434 patent describes these metafiles as mere
indicators that provide additional information about the tags
hierarchical structure in the index. Id. at col. 2 ll. 60–62. The
use of metafiles to build the claimed index is yet another natural
consequence of carrying out the abstract idea in a computing
environment and is, therefore, also insufficient to transform a
patent-ineligible abstract idea into a patent-eligible invention.
In this case, the claims do not sufficiently recite how the
inclusion of XML tags or metadata leads to an improvement in
computer database technology through some “non-conventional
and nongeneric arrangement of known, conventional pieces.”
Erie, 850 F.3d at 1328–29.
The Specification indicates that applying the common language to
new user content that is stored in the database “is straight forward.” Spec.
¶ 41. For all previously-stored user content, updating is done “to reflect the
common language.” Id. No technical details are described or claimed. See
Personal Web, 8 F.4th at 1318 (the purported improvements just restate the
abstract idea of using a content-based identifier to access and retrieve data
and maintain a desired level of redundancy of data items by storing only one
copy of a data item, which, even if unconventional, “[t]hat is all abstract.”).
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Even if the techniques are groundbreaking, innovative, or brilliant,
that is not enough for eligibility. SAP, 898 F.3d at 1163 (“No matter how
much of an advance in the finance field the claims recite, the advance lies
entirely in the realm of abstract ideas, with no plausibly alleged innovation
in the non-abstract application realm. An advance of that nature is ineligible
for patenting.”). Here, any advance lies entirely in the realm of abstract
ideas, with no plausibly alleged innovation in the non-abstract realm.
As illustrated by Erie, TLI, Capital One, and Berkheimer, a common
language of tags, metafiles, PRTs, MRTs, and labels that is used to classify
and store information in an organized manner so it can be retrieved more
easily is a conventional practice that classifiers use to classify and index
information. See Bozeman, 955 F.3d at 980–81 (using well-known computer
components to collect, analyze, and present data, and send notifications is a
logical sequence with no inventive concept); BSG, 899 F.3d at 1291 (alleged
unconventional feature of guiding data entry in a database using summary
comparison usage information is an abstract idea); Inventor Holdings, 876
F.3d at 1378 (sequence of data retrieval, analysis, modification, generation,
display and transmission amounts to instructions to apply the abstract idea
using generic computer technology with no inventive concept); Two-Way
Media, 874 F.3d at 1339 (“The claim uses a conventional ordering of steps–
–first processing the data, then routing it, controlling it, and monitoring its
reception––with conventional technology to achieve its desired result.”);
Elec. Power, 830 F.3d at 1355 (using off-the-shelf conventional computer,
network, and display technology to gather, analyze, and display data is not
inventive). Accordingly, we sustain the rejection of claims 1–17, 19, and 20
as directed to an abstract idea without significantly more.
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Written Description Rejection
The Examiner rejects claims 13–17 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description. Specifically,
the Examiner determines that there is an insufficient written description of
how the processor determines designations in a common language based on
requirements and keywords for the common language to describe content
generated in connection with the designations as recited in claims 13 and 17.
Final Act. 7–8. The Examiner determines that the Specification does not
describe how the processor makes the determinations or develops the
common language beyond reviewing the requirements and terminology of an
accreditation board without indicating how the assessment is performed or
how it is programmed into a computer.
Appellant responds that a skilled artisan would understand in light of
the Specification that the method developed a nomenclature of keywords to
apply to content and documents as a common language. Appeal Br. 18–19.
The Specification describes the common language being developed as
a “nomenclature” that provides a “single naming convention” for content.
Spec. ¶ 38. It is developed by reviewing requirements of an accreditation
board to identify terminology for the user content that is stored in the search
framework to reflect or be parallel with the terminology of the accreditation
board. Id. ¶¶ 38, 40. A list of designations is created to use in the common
language based on the accreditation board requirements, and the common
language may include a list of synonyms between the list of designations
and the information stored in the user content system. Id. ¶ 40. Searches
then may be performed using specific keywords of the common language
and its list of designations to locate relevant information. Id. ¶ 43.
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A skilled artisan would understand that the common language is a set
of terms or labels derived from accreditation requirements and applied to
user content of an organization to organize and classify its information. It
also provides an index to retrieve information by labelling information with
designations and keywords that correspond to accreditation requirements.
Thus, we do not sustain the rejection of claims 13–17 for lack of
written description.
Indefiniteness of Claims 13–17
The Examiner determines that claims 13–17 are indefinite because the
Specification does not describe an algorithm for developing a common
language. Final Act. 9–10. The Examiner determines that the references to
a general purpose computer do not provide sufficient detail of corresponding
structure or a means to accomplish the software claimed functions. Id. at 10.
Appellant responds that the Specification describes a set of modules
used to perform steps of the claims with instructions to do so and describes
how to perform the method in paragraphs 38 and 40–45. Appeal Br. 19–20.
The Specification describes a method of processing data to develop a
common language that is applied to user content as a list of designations,
synonyms, and keywords that can be used to retrieve desired information.
Figure 2 of the written description illustrates a flowchart of this process.
The accompanying description describes how the computer and instructions
develop a common language and use its keywords to retrieve information.
Spec. ¶¶ 38–45. The claims do not recite a means plus function limitation
format that would require a special purpose computer. See Aristocrat Techs.
Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008). Thus,
we do not sustain the rejection of claims 13–17 for indefiniteness.
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Claims 1, 2, 7–11, and 13–17
Rejected Over Yaskin, Camarillo, and Brockway
The Examiner relies on Yaskin to teach obtaining requirements for an
accreditation board, determining designations for use in a common language,
and developing the common language based in the designations to comprise
keywords that describe user content as recited in each of independent claims
1, 11, and 13. Final Act. 11–12, 18–19, 23. The Examiner cites Camarillo
to teach a system that creates and maintains data records and Brockway to
teach removing redundant/superfluous information. Id. at 13–15, 20–22, 23.
Appellant argues that the cited portions of Yaskin describe how a user
can create a course objective and use the defined objectives for an entirely
different course, but Yaskin does not develop a common language based on
designations with keywords generated in connection with the designations as
claimed. Appeal Br. 20–21. Appellant argues that Brockway teaches how
to handle electronic documents and tags documents as “irrelevant” when the
document is not relevant to a particular discovery request because it does not
meet the requirements for a discovery request rather than because it is a
duplicate or redundant document as claimed. Id. at 22–23. We agree.
Yaskin allows users to select standards of an accreditation council to
use for learning objectives. Yaskin ¶ 92. Yaskin also allows users to define
course objectives and course attributes such as the objective name, location,
category, and rubric to measure the objective. Id. ¶ 100. Yet, the Examiner
does not explain how developing a learning objective for an individual
course based on an accreditation requirement also teaches or suggests the
development of a common language for all information in an academic
institution that is stored in a database as claimed.
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The purpose of the claimed common language is to provide a common
language or nomenclature across all user information and documents stored
in databases of an academic institution so information can be searched and
retrieved by a set of keywords of the common language. Spec. ¶¶ 28–30.
Yaskin allows users to establish learning objectives in connection with
external accreditation standards but does not teach or suggest developing a
common language to be applied to all information as claimed.
Brockway’s teaching to exclude “irrelevant” documents does not
teach the step of removing redundant or superfluous information from the
submission information that is retrieved by the keywords of a common
language as recited in all claims. The Examiner explains that superfluous
information is unnecessary or not needed and irrelevant documents may be
considered something that is unnecessary or not needed as Brockway
teaches. Ans. 9. The Specification indicates that the use of a common
language or nomenclature should reduce the number of duplicates that are
collected. Spec. ¶ 30. In the context of the Specification superfluous
information is information that is not needed because it duplicates other
information already obtained or adds nothing additional of value to what has
been retrieved. Irrelevant documents that are excluded from a list of
documents responsive to a discovery request may not be considered to be
“redundant” or “superfluous” to information to be submitted in response to
the discovery request or other submitted information. Indeed, the irrelevant
document would not correspond to any other document in the information to
be submitted in response to the discovery request.
Accordingly, we do not sustain the rejection of claims 1, 2, 7–11, 13–
17, and 19.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1–17, 19, 20 101 Eligibility 1–17, 19, 20
13–17 112, ¶ 1 Written
Description
13–17
13–17 112, ¶ 2 Indefiniteness 13–17
1, 2, 7–11,
13–17, 19
103(a) Yaskin, Camarillo,
Brockway
1, 2, 7–11,
13–17, 19
3–6, 12 103 Yaskin, Camarillo,
Brockway, Waelti
3–6, 12
20 103 Yaskin, Camarillo,
Brockway, Palmer
20
Overall
Outcome
1–17, 19, 20
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