Ex Parte Adjali et al

Board of Patent Appeals and Interferences

Jul 27, 2011

11238518 (B.P.A.I. Jul. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IQBAL ADJALI, OGI BATAVELJIC,
MARCO DE BONI, MALCOLM BENJAMIN DIAS,
and ROBERT HURLING
____________

Appeal 2009-008066
Application 11/238,518
Technology Center 2600
____________

Before ALLEN R. MacDONALD, JEFFREY S. SMITH,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-17, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to a human-computer interface and
interface operating method for automated adaptive persuasion dialogue. The
computer presents the human user with a series of decision points, each
requiring the user to select one of a plurality of possible decision options.
The user is presented with at least one persuasion message corresponding to
each of the possible decision options, each persuasion message being
selected according to one of a plurality of different persuasion strategies.
Upon the user selecting one of the possible decision options, the computer
receives the user selection. These steps are repeated to obtain user selected
decision options for decision points based on a plurality of persuasion
strategies. A persuasion strategy that is optimized for the user is determined,
and subsequent persuasion messages are delivered to the user based on the
optimized persuasion strategy. (Abstract). Claim 1, which is illustrative of
the invention, reads as follows:
1. A method of operating a human-computer interface,
comprising:
(a) presenting a user with a series of decision points,
each decision point requiring the user to select one
of a corresponding plurality of possible decision
options;
(b) presenting the user with at least one persuasion
message for each of the possible decision options,
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to persuade the user to select one of the decision
options over each of the others at the time of
presenting each decision point, each persuasion
message being selected according to one of a
plurality of different persuasion strategies;
(c) receiving the user selection of one of the possible
decision options;
(d) repeating steps (a) to (c) to obtain user selected
decision options for decision points based on a
plurality of persuasion strategies to determine a
persuasion strategy that is optimised for the user;
and
(e) subsequently delivering persuasion messages to
the user based on the optimised persuasion
strategy.

The Examiner relies on the following prior art in rejecting the claims:
Plantec US 6,826,540 B1 Nov. 30, 2004
Newell US 6,874,127 B1 Mar. 29, 2005
De Lacharriere US 2004/0034610 A1 Feb. 19, 2004
The background section of Appellants’ Specification.

Claims 1 and 14 stand rejected under 35 U.S.C. § 101 as not being
directed to patentable subject matter.
Claims 1-12, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over De Lacharriere in view of Plantec.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over De Lacharriere and Plantec in view of the background section of
Appellants’ Specification.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over De Lacharriere and Plantec in view of Newell.
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Rather than repeat the arguments here, we make reference to the Brief
(filed Feb. 7, 2008) and the Answer (mailed May 13, 2008) for the
respective positions of Appellants and the Examiner. Only those arguments
actually made by Appellants have been considered in this decision.
Arguments that Appellants did not make in the Brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues presented by the appeal are:
1. Are claims 1 and 14 directed to statutory subject matter under
35 U.S.C. § 101 (Br. 12-14)?
2. Does the combination of De Lacharriere with Plantec teach or
suggest steps (a) through (c) recited in claim 1 (see Br. 21)?

PRINCIPLES OF LAW
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. While the scope of
patentable subject matter encompassed by § 101 is “extremely broad” and
intended to “‘include anything under the sun that is made by man,”’ it is by
no means unlimited. In re Comiskey, 554 F.3d 967, 977 (Fed. Cir. 2009)
(quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). For example,
laws of nature, abstract ideas, and natural phenomena are excluded from
patent protection. Diamond v. Diehr, 450 U.S. 175, 188 (1981).
It is the second exclusion noted above, abstract ideas, that is relevant
to the appeal before us. Thus, even if the claimed invention nominally
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recites subject matter that falls within the enumerated categories under
§ 101, the claimed invention is still ineligible if the claim as a whole is
nonetheless directed to an abstract idea. See id.
To make this determination for claimed processes, the machine-or-
transformation test is “a useful and important clue.” Bilski v. Kappos, 130
S.Ct. 3218, 3227 (2010). Although not the sole test, the machine-or-
transformation test is nonetheless an investigative tool that asks whether a
claimed process is (1) tied to a particular machine or apparatus, or (2)
transforms a particular article into a different state or thing. Id. at 3225,
3227 (quoting In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc)).
“[A] machine is a ‘concrete thing, consisting of parts, or of certain
devices and combination of devices.’ This ‘includes every mechanical
device or combination of mechanical powers and devices to perform some
function and produce a certain effect or result.”’ In re Ferguson, 558 F.3d
1359, 1364 (Fed. Cir. 2009) (quoting In re Nuijten, 500 F.3d 1346, 1355
(Fed. Cir. 2007)).

ANALYSIS
Rejections under 35 U.S.C. § 101
We sustain the rejection under 35 U.S.C. § 101 of claim 1 as being
directed to non-statutory subject matter, namely an abstract idea. We do not
sustain the rejection of claim 14 under 35 U.S.C. § 101. Independent claim
1 recites a method of operating a human-computer interface. We conclude
that the method recited in claim 1, when interpreted as a whole, is not tied to
a particular machine or apparatus, does not transform a particular article into
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a different state or thing, and is directed to an abstract idea. We address
each prong of the machine-or-transformation test separately.
Claim 1 is Not Tied to a Particular Machine or Apparatus
Claim 1 is not tied to any machine, let alone a particular machine.
Claim 1 is not tied to any concrete parts, devices, or combinations of
devices, let alone a concrete thing that performs a function and produces a
certain effect or result. See Ferguson, 558 F.3d at 1364. Rather, the claim
merely delivers “persuasion messages” based on a series of user selections
that are used to “determine a persuasion strategy.” The claims are silent as
to what machine, if any, is used to perform these steps. Nothing in claim 1
precludes mentally determining a persuasion strategy and delivering
persuasion messages via the recited steps, a cognitive activity that is not
patentable under § 101. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972);
see also Comiskey, 554 F.3d at 979 (“[M]ental processes-or processes of
human thinking-standing alone are not patentable even if they have practical
application.”).
Nevertheless, even assuming that a machine is required to implement
the recited method (which it is not), such a machine would not be a
particular machine as the Federal Circuit indicated in Bilski. See Bilski, 545
F.3d at 961-62. Appellants’ Specification, for example, notes that
[t]he interface 1 of the present invention may be implemented
on any suitable computing system or apparatus having a
processing device 2 capable of executing the dialogue
application 6 of the present invention (discussed below).
Preferred computing apparatus include, but are not limited to,
desktop personal computers (PCs), laptop computers, personal
digital assistants (PDAs), smart mobile phones, ATM
machines, informational kiosks and electronic shopping
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assistants etc., modified, as appropriate, in accordance with the
prescription of the following arrangements.
It is to be appreciated however, that the present interface 1 may
be implemented on, or form a part thereof, of any suitable
portable or permanently sited computing apparatus that is
capable of interacting with a user.
In most applications, the processing device 2 will correspond to
one or more central processing units (CPUs) within the
computing apparatus, and it is to be understood that the present
interface may be implemented using any suitable processor or
processor type.
(Spec. 4:9-29).
Not only are these examples merely optional alternatives, as indicated
by the use of permissive language (i.e., “include, but are not limited to” and
“may be”), this generalized computing capability is, at best, tantamount to a
general purpose computing device, and would not tie the process to a
particular machine or apparatus. Even if claim 1 were tied to such a general
purpose computer (which it is not), such a nominal recitation of physical
structure tantamount to a general purpose computer would be analogous to
the recitation of storing binary coded decimal signals in a shift register that
the U.S. Supreme Court found to be unpatentable in Benson. See Benson,
409 U.S. at 73. In any event, “[n]ominal recitations of structure in an
otherwise ineligible method fail to make the method a statutory process.” Ex
parte Langemyr, 89 USPQ2d 1988, 1996 (BPAI 2008) (informative) (citing
Benson, 409 U.S. at 71-72). We therefore find that, when considered as a
whole, the method of claim 1 is not tied to a particular machine.
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Claim 1 Does Not Transform a Particular Article into a Different State or
Thing
We also find that the method recited in claim 1 does not transform a
particular article into a different state or thing. The claim delivers
persuasion messages to a user. The messages are delivered based on an
optimized persuasion strategy that is determined from user selected decision
options for decision points obtained in steps (a)-(c).
Although these “messages” are intended to “persuade the user” and
are obtained from “user selected decision options for decision points,” the
decision points and decision options merely constitute raw data that are
manipulated by the recited steps to ultimately arrive at “persuasion
messages” that are delivered. Such manipulations, however, are analogous
to the mathematical calculations found to be unpatentable in Benson, 409
U.S. at 71-72, and Parker v. Flook, 437 U.S. 584, 594-96 (1978).
Nevertheless, even if this raw data could somehow be considered “articles”
(which they are not), see Nuijten, 500 F.3d at 1356, the data would not
constitute a particular article. Compare Bilski, 545 F.3d at 962-63 (citing
X-ray attenuation data in In re Abele, 684 F.2d 902 (CCPA 1982), which not
only represented physical and tangible objects, but was also transformed into
a particular visual depiction of physical objects or substances on a display).
Here, however, the recited decision options and decision points in
claim 1 are merely descriptive data for a predetermined process and are
manipulated to arrive at “persuasion messages.” The recited process does
not therefore transform data in the manner analogous to Abele's
transformation. See id. Therefore, the process of claim 1 does not transform
a particular article into a different state or thing.
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Thus, we conclude that claim 1 fails the machine-or-transformation
test.
Claim 1 is Directed to an Abstract Idea
However, our guidance from the Supreme Court in Bilski indicates
that the “machine-or-transformation” test is not the final inquiry under 35
U.S.C. § 101. We further analyze claim 1 under the Supreme Court’s
precedents on the unpatentability of abstract ideas. In Benson, the Court
considered whether a patent application for an algorithm to convert binary-
coded decimal numerals into pure binary code was a “process” under § 101.
409 U.S. at 64–67. The Court first explained that “‘[a] principle, in the
abstract, is a fundamental truth; an original cause; a motive; these cannot be
patented, as no one can claim in either of them an exclusive right.’” Id. at
67. The Court then held the application at issue was not a “process,” but an
unpatentable abstract idea. “It is conceded that one may not patent an idea.
But in practical effect that would be the result if the formula for converting
... numerals to pure binary numerals were patented in this case.” Id. at 71.
A contrary holding “would wholly pre-empt the mathematical formula and
in practical effect would be a patent on the algorithm itself.” Id. at 72. In
Bilski, the applicant attempted to patent a process for hedging, or protecting
against risk. The Court concluded that the claims attempted to patent the use
of the abstract idea of hedging risk in the energy market. 130 S.Ct. at 3231.
Here, similar to the claims in Benson and Bilski, we conclude that claim 1 is
directed to an abstract idea.
We are, therefore, not persuaded that the Examiner erred in rejecting
claim 1 under § 101.
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Claim 14 is Directed to a Machine
Claim 14 is directed to a “human-computer interface” comprising
means for performing functions that execute the steps recited in claim 1.
Claim 14 is, therefore, “construed to cover the corresponding structure,
material, or acts described in the specification and equivalents thereof,” 35
U.S.C. § 112, sixth paragraph. The Specification discloses that the
“interface comprises a processing device, an input device, an output device
and one or more storage devices associated with the processing device”
(Spec. 4:4-7 (reference numerals omitted)) “implemented on [a] suitable
computing system or apparatus having a processing device” (Spec. 4:10-11)
having program instructions in the form of a “dialog application” (Spec.
4:31) as the structure that comprises the various means (see also, Br. 10-11).
We conclude that claim 14 is directed to a machine, and find the Examiner
has not established that the subject matter of claim 14 is non-statutory, see
35 U.S.C. § 101.
Rejections under 35 U.S.C. § 103(a)
Appellants contend, inter alia, that elements (a)-(c) of claim 1 are not
taught or suggested by the combination of De Lacharriere and Plantec
because:
Neither De Lacharriere et al nor Plantec et al present a
persuasion message with each decision option (i.e., each choice
in an answer set) that attempts to persuade the responder to
select that option in order to determine which persuasion
message is more, or most, effective with that particular
individual.
(Br. 21).
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The Examiner finds that De Lacharriere teaches the steps (a)-(c) of
claim 1 in Figure 3A and paragraphs [0060]-[0066] (Ans. 6-7), explaining
that the passage discloses “decision points [that] are [a] list of products a
customer should use and/or purchase” (Ans. 6) and other information
intended to induce purchase of the products or other behavior. The
Examiner continues that “[t]his is a form of marketing and advertising in
which persuasion is inherent” (Ans. 7). The Examiner further notes that
“Plantec in an analogous art discloses persuading the user (Abstract; Col. 2,
line 23-Col. 4, line 49; Col. 5, line 21- Col. 6, line 51; and Col 7, lines 4-
46)” (Ans. 5).
As accurately described by Appellants:
In the method of De Lacharriere et al, characteristic
information is gathered by means of survey or questionnaire
such as is shown in Fig 2. Examples of characteristic
information, enumerated on page 3 paragraphs 0044 and 0045
include habits (e.g. smoking, sun exposure, drinking, shopping),
preferences (e.g., travel, color, sexual), physical conditions
(e.g., balding, hair color, graying, fitness), and demographic
information (e.g., parental status, income, age).
(Br. 14-15; see De Lacharriere Fig. 1, Ref. 102, 103).
An analysis of the profile data set is then performed to
extract correlations and identify potential causality and arrive at
a diagnosis. After a diagnosis has been made, a prompt can be
provided to the user to suggest a change in habits, lifestyle or
personal care, further follow up diagnostic testing, or the use of
a product suited to the condition, etc. (page [sic] [0060]-
[0062]).
(Br. 15; see De Lacharriere Fig. 1, Ref. 106).
With the exception of Figure 3A, the passages of De Lacharriere
relied on by the Examiner relate to the analysis (i.e., “processing”) of the
profile data (De Lacharriere Fig. 1, Ref. 106) rather than the gathering (i.e.,
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“access[ing]” and “receiv[ing]”) of the profile data (De Lacharriere Fig. 1,
Ref. 102, 103). We do not disagree with the Examiner’s finding that the
analysis of the profile data as described by De Lacharriere comprises
“subsequently delivering persuasion messages to the user based on [an]
optimised persuasion strategy” as recited in step (e) of claim 1 (Ans. 8).
However, the Examiner has cited many of the same passages of De
Lacharriere as teaching step (e) (id.) as were cited as teaching steps (a)-(c)
(Ans. 6-7).
Claim 1’s steps (a)-(c) are related to the gathering of information
about the user upon which the subsequent persuasion messages of step (e)
are based. De Lacharriere (see, e.g., De Lacharriere Fig. 3A) discloses a
survey for gathering characteristic (e.g., habits, preferences, physical
conditions, demographic information) information (Br. 22). Plantec (see
e.g., Plantec Fig. 4) teaches a survey for gathering factual or preference
information. Plantec also teaches the use of persuasion messages to
persuade the user to provide responses to questions posed in the survey (see,
e.g., Plantec, col. 2, ll. 43-52). We find no teaching or suggestion in the
cited portions of De Lacharriere or Plantec, or elsewhere in any reference of
record in the Appeal, of a survey questionnaire wherein “the user [is
presented] with at least one persuasion message for each of the possible
decision options, to persuade the user to select one of the decision options
over each of the others at the time of presenting each decision point, each
persuasion message being selected according to one of a plurality of
different persuasion strategies,” as recited in step (b) of claim 1, prior to a
step of “subsequently delivering persuasion messages to the user based on
the optimised persuasion strategy,” as recited in step (e) of claim 1
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(emphases added). Accordingly, the Examiner has not established a prima
facie case that steps (a)-(c), in particular, step (b), of claim 1 are taught or
suggested by the combination of De Lacharriere and Plantec.
Independent claim 14 contains recitations similar to those of claim 1
which we found to be absent in the prior art. Accordingly, we do not sustain
the rejection of claims 1 and 14, or of claims 2-13 and 15-17 dependent
thereon.
DECISION
The decision of the Examiner to reject claim 1 is affirmed. The
decision of the Examiner to reject claims 2-17 is reversed.1

1 The Board of Patent Appeals and Interferences is a review body,
rather than a place of initial examination. We have affirmed the rejection of
claim 1 as directed to non-statutory subject matter. However, we have not
reviewed claims 2-13 to the extent necessary to determine whether these
claims are directed to non-statutory subject matter.
In addition, we have not reviewed claims 14-17 to determine whether
these claims are patentable under 35 U.S.C. § 112, second paragraph, see
Supplementary Examination Guidelines for Determining Compliance With
35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications,
Part 1.III.C.3, 76 Fed.Reg. 7162, 7168 (Feb. 9, 2011)(“[M]ere reference to a
general purpose computer with appropriate programming without providing
an explanation of the appropriate programming, or simply reciting
‘software’ without providing detail about the means to accomplish the
software function, would not be an adequate disclosure of the corresponding
structure to satisfy the requirements of § 112, ¶ 2.”)(footnotes omitted). See
also Appellants’ Specification which defines the “means for determining” of
claim 14 as “[a]ny suitable statistical algorithm may be applied” (Spec.
11:27-28).
In the event of further prosecution we leave it to the instant Examiner
to determine the appropriateness of any further rejections under 35 U.S.C.
§§ 101 and 112, second paragraph.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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