Ex Parte AllenDownload PDFPatent Trial and Appeal BoardFeb 27, 201714488820 (P.T.A.B. Feb. 27, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/488,820 09/17/2014 Corville O. Allen AUS920120366US2 6407 40412 7590 03/01/2017 IBM CORPORATION- AUSTIN (JVL) C/O LESLIE A. VAN LEEUWEN 6123 PEBBLE GARDEN CT. AUSTIN, TX 78739 EXAMINER ADESANYA, OLUJIMI A ART UNIT PAPER NUMBER 2658 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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): leslie@vl-patents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CORVILLE O. ALLEN Appeal 2016-007283 Application 14/488,8201 Technology Center 2600 Before HUNG H. BUI, JON M. JURGOVAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—6 and 8—12, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 According to Appellant, the real party in interest is International Business Machines Corporation. App. Br. 1. 2 Our Decision refers to Appellant’s Appeal Brief filed January 21, 2016 (“App. Br.”); Reply Brief filed July 12, 2016 (“Reply Br.”); Examiner’s Answer mailed May 16, 2016 (“Ans.”); Final Office Action mailed July 23, 2015 (“Final Act.”); and original Specification filed September 17, 2014 (“Spec.”). Appeal 2016-007283 Application 14/488,820 STATEMENT OF THE CASE Appellant’s invention relates to “an approach that automatically detects and hides potential spoiler information found in posts made to a collaborative environment.” Spec. 11. Claims 1 and 10 are independent. Representative claim 1 is reproduced below with disputed limitations in italics: 1. A method of detecting and hiding spoiler information, the method, implemented by an information handling system, comprising: automatically detecting, by a processor, potential spoiler content in a user text entry submitted to an online collaborative environment; comparing the potential spoiler content to a plurality of sets of content filter data, wherein the plurality of sets of content filter data comprises one or more user configurable sets of content filter data; inserting a spoiler tag into the user text entry in response to the comparison identifying that the potential spoiler content is spoiler content; and inhibiting display of the spoiler content from the online collaborative environment. App. Br. 18 (Claims App’x). Examiner’s Rejections and References (1) Claims 1—6 and 8—12 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15—20 of co-pending application 13/850,347. Ans. 6—7. (2) Claims 1—6 and 8—12 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Ans. 7—8. 2 Appeal 2016-007283 Application 14/488,820 (3) Claims 1—6 and 8—12 stand rejected under 35 U.S.C. § 103 as being unpatentable over Arme et al. (US 2013/0297706 Al; published on Nov. 7, 2013; “Arme”), Thomberry et al. (US 2012/0072941 Al; published on Mar. 22, 2012; “Thomberry”), and Nakamura et al., “Study of Information Clouding Methods to Prevent Spoilers of Sports Match,” ACM 978-1-4503-1287, pp. 661—664; “Nakamura.” Ans. 8—19. (4) Claims 10—12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Arme and Nakamura. Ans. 19-24. ANALYSIS Obviousness-Type Double Patenting Rejection: Claims 1—6 and 8—12 The Examiner finds claims 1—6 and 8—12 are not patentably distinct from claims 15—20 of co-pending Application No. 13/850,347. Ans. 6. Appellant indicates that a terminal disclaimer will be submitted in due course to overcome the rejection. App. Br. 4. However, such a terminal disclaimer has not been filed. Accordingly, we summarily sustain the provisional double patenting rejection of claims 1—6 and 8—12. 35 U.S.C. § 101: Claims 1—6 and 8—12 With respect to independent claims 1 and 10, the Examiner finds these method claims are directed to an abstract idea of “detecting spoiler content among user submitted text in a collaboration environment (e.g. papers submitted in a conference) and inhibiting/obscuring the spoiler content manually.” Ans. 7. The Examiner also finds additional elements recited in these claims do not amount to significantly more than the abstract idea itself. Id. According to the Examiner, any reference to “a computer” to implement 3 Appeal 2016-007283 Application 14/488,820 the abstract idea does not transform the abstract idea into a patent eligible subject matter under 35 U.S.C. § 101. Ans. 8. Appellant presents several arguments against the Examiner’s finding. First, Appellant argues the Examiner’s finding is conclusory and not support by any rationale and, as such, “does not meet the requirements for a prima facie rejection under 35 U.S.C. § 101.” App. Br. 5—6. Second, citing the PTO’s Interim Eligibility Guidance (see 79 FR 74622, Section I.A), Appellant argues “Appellant’s claims do not seek to ‘tie up’ any judicial exception so that others cannot practice it, and therefore the eligibility of Appellant’s claims is self-evident.” App. Br. 6—7. According to Appellant, Appellant does not attempt to restrict others from practicing every conceivable method of detecting and hiding spoiler information. Rather, Appellant's claims are directed to specific, unique, and non-obvious methods for automatically detecting potential spoiler content in a user text entry submitted to an online collaborative environment, comparing the potential spoiler content to sets of content filter data, inserting a spoiler tag into the user text entry if the potential spoiler content is determined to be spoiler content, and inhibiting display of the spoiler content from the online collaborative environment, as detailed in the claim elements. Therefore, Appellant respectfully submits that subject matter eligibility in the present application is suitable for the Streamline Eligibility Analysis according to the Interim Eligibility Guidance, Section l.B.3. App. Br. 7. Third, citing Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), Appellant argues “Appellant’s claim limitations simply do not fit within the definition of an abstract idea as defined by the courts,” i.e., “does not fall into the category of fundamental practices long prevalent in their fields.” App. Br. 7—10. According to Appellant, “Appellant’s claim limitations are not merely a method of organizing human activity, and could 4 Appeal 2016-007283 Application 14/488,820 not be performed manually.” App. Br. 10. Appellant further argues Appellant’s claims “are directed to improvements in the technical field of online collaboration and social networking” and “amount to significantly more than the alleged abstract idea itself, and, therefore, are directed to statutory subject matter.” App. Br. 12. We are not persuaded by Appellant’s arguments. The Supreme Court has long held that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice, 134 S. Ct. at 2354 (quoting Assoc, for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks omitted)). The “abstract ideas” category embodies the longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134 S.Ct. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). In Alice, the Supreme Court sets forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Id. If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “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, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to 5 Appeal 2016-007283 Application 14/488,820 significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). Turning to the first step of the Alice inquiry, we agree with the Examiner that method claims 1 and 10 are directed to a patent-ineligible abstract concept of “detecting spoiler content among user submitted text in a collaboration environment (e.g. papers submitted in a conference) and inhibiting/obscuring the spoiler content.” Ans. 7—8. All the steps recited in Appellant’s claims 1 and 10, including, for example: (i) “automatically detecting . . . potential spoiler content. . (ii) “comparing the potential spoiler content to a plurality of sets of content filter data”; (iii) “inserting a spoiler tag into the user text entry . . and (iv) “inhibiting display of the spoiler content...” are abstract processes of collecting and analyzing information of a specific content. Information as such is an intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007). Information collection and analysis, including when limited to particular content, is within the realm of abstract ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Turning to the second step of the Alice inquiry, we find nothing in claims 1 and 10 that adds anything “significantly more” to transform the abstract concept of collecting, storing, and analyzing information into a patent-eligible application. Alice, 134 S. Ct. at 2357. Appellant does not argue each of the steps of (i) “automatically detecting . . . potential spoiler content. . .”; (ii) “comparing the potential spoiler content to a plurality of 6 Appeal 2016-007283 Application 14/488,820 sets of content filter data”; (iii) “inserting a spoiler tag into the user text entry . . and (iv) “inhibiting display of the spoiler content” is individually inventive. None of Appellant’s arguments show that some inventive concept arises from the ordered combination of these steps, which, even if true, would be unpersuasive given that they are ordinary steps in data analysis and are recited in the ordinary order. Instead, claims 1 and 10 simply incorporate a general-purpose computer to perform the abstract concept of “detecting spoiler content among user submitted text in a collaboration environment. . . and inhibiting/obscuring the spoiler content,” i.e., collecting and analyzing information. As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014), Bilski’s “machine-or- transformation” (MoT) test3 can provide a “useful clue” in the second step of the Alice framework. Under Bilski’s “MoT” test, a claimed process is patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus; or (2) it transforms a particular article into a different state or thing. Bilski, 545 F.3d at 954 (citing Gottschalk, 409 U.S. at 70). However, Appellant’s process claims 1 and 10 are neither sufficiently “tied to a 3 In In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc), the Federal Circuit adopted a “machine-or-transformation” (MoT) test to determine whether a process claim is eligible under 35 U.S.C. § 101. However, the Supreme Court held, in Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010), that the “MoT” test, while a “useful and important clue,” is no longer the sole test for determining the patent-eligibility of process claims under § 101. Since Bilski v. Kappos, the Supreme Court has created a two-step framework in Alice Corp. Pty. Ltd. v. CLS BankInt’l, 134 S. Ct. 2347, 2354 (2014) to address whether a claim falls outside of § 101, which we discuss herein. 7 Appeal 2016-007283 Application 14/488,820 particular machine or apparatus” nor involved in any type of transformation of any particular article.4 For example, limiting such an abstract concept of “detecting spoiler content among user submitted text in a collaboration environment. . . and inhibiting/obscuring the spoiler content” to a general purpose computer recited in Appellant’s claims 1 and 10 does not make the abstract concept patent-eligible under 35 U.S.C. § 101. Ans. 7—8. As recognized by the Supreme Court, “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention.” See Alice, 134 S. Ct. at 2359 (concluding claims “simply instruct[ing] the practitioner to implement the abstract idea of intermediated settlement on a generic computer” not patent eligible); see also Ultramercial, 772 F.3d at 715—16 (claims merely reciting abstract idea of using advertising as currency as applied to particular technological environment of the Internet not patent eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (claims reciting “generalized software components arranged to implement an abstract concept [of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer” not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an 4 Alice also confirmed that if a patent’s systems claims are no different in substance from its method claims, they will rise and fall together. 134 S. Ct. at 2360. The same was true of the Alice patent’s media claims. 135 S. Ct. at 2360. 8 Appeal 2016-007283 Application 14/488,820 abstract concept, without more, is insufficient to render [a] claim patent eligible” (internal citation omitted)). In the Reply, Appellant relies on the Federal Circuit’s decision in Enfish v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to argue: . . . [Sjimilar to Enfish, Appellant’s claims focus on improving the computer capabilities of the online collaborative environment, much as the claims in Enfish focused on improving the capabilities of a computer database. By automatically detecting potential spoiler content in a user text entry submitted to an online collaborative environment, inserting a spoiler tag into the user text entry in response to the comparison identifying that the potential spoiler content is spoiler content, and inhibiting display of the spoiler content from the online collaborative environment, Appellant improves the capabilities of the online collaboration environment itself, and makes the computer itself more useful for users. Reply Br. 2—3 (emphasis added). However, Appellant’s argument is misplaced and unpersuasive. In Enfish, the Federal Circuit held that claims directed to specific improvements in computer capabilities (i.e., self-referential table for a computer database) are patent-eligible subject matter. For example, Enfish’s claim 17 recites: A data storage and retrieval system for a computer memory, comprising: means for configuring said memory according to a logical table, said logical table including: a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information; a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said 9 Appeal 2016-007283 Application 14/488,820 logical column including an OID to identify each said logical column; and means for indexing data stored in said table. As explained by the Federal Circuit, Enfish ’s “claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database” that “functions differently than conventional data structures” and that is “designed to improve the way a computer stores and retrieves data in memory.” Enfish, 822 F.3d at 1337-39. In contrast to Enfish, Appellant’s method claims 1 and 10 are not rooted in any computer technologies. Nor do Appellant’s method claims 1 and 10 seek to improve any type of computer capabilities, such as Enfish’s “self-referential table for a computer database.” Instead, Appellant’s method claims 1 and 10 simply recite an abstract concept of detecting, comparing, inserting, and inhibiting information. Because Appellant’s method claims 1 and 10 are directed to a patent- ineligible abstract concept, we sustain the Examiner’s rejection of claims 1— 6 and 8—13 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 35 U.S.C. § 103: Claims 1—6, 8, and 9 The Examiner finds Arme teaches most aspects of Appellant’s claimed “method of detecting and hiding spoiler information,” including: (1) “automatically detecting . . . potential spoiler content in a user text entry submitted to an online collaborative environment”; (2) “comparing the potential spoiler content to a plurality of sets of content filter data . . .”; (3) 10 Appeal 2016-007283 Application 14/488,820 “inserting a spoiler tag ...” and (4) “inhibiting display of the spoiler content from the online collaborative environment.” Ans. 8—10 (citing Arme || 21, 23, 38, 58, 77, 8^87, 134, 140, 141, 143). To support the conclusion of obviousness, the Examiner relies on Thomberry for teaching the “user configurable sets of content filter data” to identify spoiler content, and Nakamura for expressly teaching “inserting a spoiler tag into the user text entry in response to the comparison identifying that the potential spoiler content is spoiler content.” Ans. 10—11 (citing Thomberry || 24, 28, 30, 31, 41; Nakamura §§ 1—2, p. 661). Appellant contends none of the cited references (including Nakamura) teach or suggest the disputed limitation: “inserting a spoiler tag into the user text entry in response to the comparison identifying that the potential spoiler content is spoiler content.” App. Br. 14—16; Reply Br. 8—9. In particular, Appellant argues “Arme does not teach or suggest a spoiler tag that is inserted into a user text entry” and “[n]one of the information clouding methods disclosed by Nakamura teach or suggest ‘inserting a spoiler tag into the user text entry, ’ as taught and claimed by Appellant in independent claim 1.” App. Br. 15. According to Appellant, “merely hiding the spoiler text, as disclosed by Nakamura, is not the same as ‘inserting a spoiler tag into the user text entry,’ as taught and claimed by Appellant.” Reply Br. 9. We do not find Appellant’s arguments persuasive. Instead, we find the Examiner has provided a comprehensive response to Appellant’s arguments supported by a preponderance of evidence. Ans. 33—36. As such, we adopt the Examiner’s findings and explanations provided therein. Id. For additional emphasis, we note claim terms are given their broadest reasonable interpretation consistent with the Specification. In re Am. Acad. 11 Appeal 2016-007283 Application 14/488,820 of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). The term “spoiler tag” is described by Appellant’s Specification as including “command buttons, hyperlinks, or any visual indicator that informs the user of the hidden spoiler content and allows the user to read the spoiler content if so desired, e.g., by selecting a graphic user interface (GUI) associated with the spoiler tag, etc.” Spec. 125. In light of Appellant’s Specification, the limitation “inserting a spoiler tag into the user text entry” can be interpreted to encompass a “black out or block from view the segment with the spoiler” as disclosed by paragraph 86 of Arme, or alternatively, Nakamura’s “visual indicator (i.e., the black coloring) that alerts the user to spoiling text/information in order to avoid viewing such spoilers.” Ans. 35 (citing Nakamura §§ 1—2). For these reasons, Appellant has not demonstrated Examiner error. As such, we sustain the Examiner’s obviousness rejection of independent claims 1 and 10, and their respective dependent claims 2—9 and 11, which Appellant does not argue separately. App. Br. 16. CONCLUSION On the record before us, we conclude Appellant has not demonstrated the Examiner erred in rejecting claims 1—6 and 8—12 under 35U.S.C. § 101 and § 103(a). DECISION As such, we AFFIRM the Examiner’s obviousness-type double patenting rejection of claims 1—6 and 8—12 as well as the Examiner’s final rejection of claims 1—6 and 8—12 under 35U.S.C. § 101 and § 103. 12 Appeal 2016-007283 Application 14/488,820 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation