Ex Parte Brun

Patent Trial and Appeal Board

Dec 1, 2017

13600329 (P.T.A.B. Dec. 1, 2017)

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.
13/600,329 08/31/2012 Caroline Brun 20120543USNP-XER2927US01 9818
62095 7590 12/01/2017
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
JACKSON, JAKIEDA R
ART UNIT PAPER NUMBER
2657
MAIL DATE DELIVERY MODE
12/01/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CAROLINE BRUN
____________

Appeal 2017-006453
Application 13/600,3291
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–26. We have jurisdiction over the pending rejected
claims under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies Xerox Corporation as the real party in interest. (App.
Br. 1.)
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THE INVENTION
Appellant’s disclosed and claimed invention is directed to extracting
opinion-related patterns and includes receiving a corpus of reviews, the
reviews each including an explicit rating of a topic. (Abstract.) Claims 1,
21 and 24 are independent.
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method for extracting opinion-related patterns,
comprising:
receiving a corpus of user reviews, each of the reviews in
the corpus including an explicit rating of a topic selected by the
respective user from a plurality of possible ratings;
partitioning at least a portion of the reviews among a
predefined plurality of classes, based on the explicit ranking;
identifying syntactic relations in a text portion of each of
the reviews in the portion of the reviews, each of the identified
syntactic relations including a first term in the text portion
comprising an adjective and a second term in the text portion
comprising a noun, the adjective serving as a modifier or
attribute of the respective noun;
generating a set of patterns, each of the patterns having at
least one of the identified syntactic relations as an instance;
assigning a set of at least four features to each pattern;
with a processor, clustering the patterns into a set of
clusters based on the set of features, at least one of the features
in the set of features being based on occurrences, in the
predefined classes, of the instances of the patterns;
selecting a subset of the clusters and assigning a polarity
to patterns in the respective clusters in the subset.
App. Br. 20 (Claims Appendix).

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REJECTION
The Examiner rejected claims 1–26 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. (Final Act. 5.)

ISSUE ON APPEAL
Appellant’s arguments in the Appeal Brief present the following
dispositive issue:2
Whether the pending claims are directed to non-statutory subject
matter. (App. Br. 7–18.)

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner erred. We disagree with Appellant’s arguments,
and we adopt as our own (1) the pertinent findings and reasons set forth by
the Examiner in the Action from which this appeal is taken (Final Act. 2–9)
and (2) the corresponding findings and reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief. (Ans.
2–5.) We concur with the applicable conclusions reached by the Examiner,
and emphasize the following.
The Examiner concludes the pending claims are invalid under
35 U.S.C. § 101, because the claims are generally “directed to the abstract

2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Oct. 27, 2016) (herein, “App.
Br.”); the Reply Brief (filed Mar. 15, 2017) (herein, “Reply Br.”); the Final
Office Action (mailed July 8, 2016) (herein, “Final Act.”); the Advisory
Action (mailed Aug. 5, 2016) (herein, “Advisory Act.”); and the Examiner’s
Answer (mailed Feb. 24, 2017) (herein, “Ans.”) for the respective details.
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idea of learning opinion related patterns for contextual and domain-
dependent opinion detection” (Final Act. 5), in which the Examiner provides
“[a] detailed description how each step can be performed by [a user]” (Final
Act. 5; see for example, Final Act. 5–6 describing how each step in claim 1
can be performed by a user.) Akin to the analysis provided in Electric
Power Group, LLC v. Alstom S.A., 830 F3d. 1350 (Fed. Cir. 2016), the
Examiner additionally finds that
[t]he claims focus on collecting information, analyzing it and
displaying certain results of the collection and analysis. The
claims collect information, which does not change its character
as information. The analyzing can be done by steps that goes
through one’s mind, or by mathematical algorithms, which is
essentially mental processes within the abstract-idea category.
Presenting results of abstract processes of collecting and
analyzing information is abstract as an ancillary part of
collection and analysis. Here, the claims are clearly focused on
the combination of those abstract idea processes.

(Ans. 4.)
Appellant argues that “[t]he claims do not fall within the Abstract
Ideas exception” (Reply Br. 8), because the claims “do not fall within the
category of ‘mental process.’” (Reply Br. 8.)
Regarding claims 1–20, Appellant contends that “at least four features
are to be considered in the clustering” and “[s]uch a task is not known to be
performed in the head of a person or with pen and paper.” (Reply Br. 9.)
Appellant distinguishes the result in SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 Fed.Appx. 950 (Fed. Cir. 2014), noting that “the
SmartGene decision was ‘limited to the circumstances presented here, in
which every step is a familiar part of the conscious process that doctors can
and do perform in their heads.’” (Reply Br. 7–8, quoting SmartGene at
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955.) Appellant makes related arguments based on the claimed clustering
techniques with respect to claim 25 (Reply Br. 11–12), claims 21–23 (Reply
Br. 12), claims 24 and 26 (Reply Br. 13).
We are not persuaded by Appellant’s arguments. We adopt the
Examiner’s findings and conclusions provided in the Final Office Action
and Answer. (Final Act. 2–9; Ans. 2–5.) The Supreme Court has long held
that “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354
(2014) (quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). The “abstract ideas” category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S. Ct. at 2354-55 (quoting Gottschalk v. 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. 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 Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). 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 significantly more than a patent upon the
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[ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 566
U.S. at 73.) The prohibition against patenting an abstract idea “‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution
activity.”’ Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (internal citation
omitted.)
Appellant’s arguments focus on claim 1—accordingly we select
claim 1 as representative in evaluating whether the claims are patent-eligible
under Section 101. Independent claims 21 and 24 recite additional steps that
are readily performable by a human being, and these claims follow the same
analysis as claim 1.3 See 37 C.F.R. § 41.37(c)(1)(iv). Turning to the first
step of the Alice inquiry, we agree with the Examiner that Appellant’s
claim 1 is reasonably characterized as directed to an abstract idea of
“learning opinion related patterns for contextual and domain-dependent
opinion detection.” (Final Act. 5.) All the components recited in claim 1 —
including: (i) receiving a corpus of user reviews; (ii) partitioning at least a
portion of the reviews; (iii) identifying syntactic relations; (iv) generating a
set of patterns; (v) assigning a set of at least four features to each pattern;
(vi) clustering the patterns; and (vii) selecting a subset of the clusters and
assigning a polarity—are consistent with the Examiner’s correct
characterization of the “learning opinion related patterns for contextual and
domain-dependent opinion detection” abstract idea that is the subject of the

3 We note that Appellant’s arguments regarding the second step of the Alice
test makes reference to claim 1 (see Reply Br. 15) with only passing remarks
regarding claims 20, 21, and 23 (see Reply Br. 17.)
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claims, which is a sequence of steps readily performed by a human being
using index cards or the like.
There is no definitive rule to determine what constitutes an “abstract
idea.” Rather, the Federal Circuit has explained that “both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
cases.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir.
2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are
patent-eligible under § 101, “the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen—what prior cases were about, and which way they were decided”).
The Federal Circuit also noted that “examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts.” Amdocs, 841 F.3d at
1294 n.2 (internal citation omitted.)
We are not persuaded by Appellant’s arguments that “[h]ere the steps
are clearly not performable purely mentally” (Reply Br. 9) as Appellant
provides no factual support for the assertion that “clustering in a
multidimensional feature space (of at least four features) is not a trivial
operation” that could not be performed manually, at least for smaller
populations of reviews within the scope of the claims. (Reply Br. 10.) Here,
the claims are similar to the claims that the Federal Circuit determined are
patent ineligible in Electric Power Group, 830 F.3d at 1353–54 (collecting
information and “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
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mental processes within the abstract-idea category”). The Federal Circuit
has also held similar data manipulation claims to be directed to patent-
ineligible abstract idea—see Digitech Image Techs., LLC v. Elecs. For
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (employing
mathematical algorithms to manipulate existing information); OIP Tech.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (offer-
based price optimization); Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information
presented to a user based on particular information); Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir.
2013) (generating tasks in an insurance organization); and Versata Dev. Grp.
v. SAP Am., 793 F.3d 1306, 1333–34 (Fed. Cir. 2015) (price-determination
method involving arranging organizational and product group hierarchies).
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything “significantly more” to transform the abstract
concept of learning opinion related patterns for contextual and domain-
dependent opinion detection. Alice, 134 S. Ct. at 2357. Beyond that abstract
idea, the claims merely recite “‘well-understood, routine, conventional
activit[ies],”’ either by requiring conventional computer activities (such as
clustering) or routine data-gathering steps. Alice, 134 S. Ct. at 2359
(quoting Mayo, 566 U.S. at 73.) Considered individually or taken together
as an ordered combination, the claim elements fail “to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at
2357 (quoting Mayo, 566 U.S. at 72–73, 78.)
Appellant argues that “even if the claims are directed to an Abstract
idea, they recite significantly more.” (Reply Br. 14.) Appellant contends
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that in claim 1, “the clustering of patterns, not merely data, is based on at
least four features” and that the claim “recites the additional step of selecting
a subset of the clusters and assigning a polarity to patterns in the respective
clusters in the subset.” (Reply Br. 15, italics in original.) Appellant further
contends that “the specification clearly describes how the method claimed
provides advantages in performance by providing contextual rules that are
useful in detecting opinions in an opinion detection system” through patterns
in which “each pattern includes a syntactic relationship between a first term
with an ambiguous polarity (‘ambiguous term’) and a second term
(‘supporting term’) each of which has been assigned a predefined part of
speech within an expression in which the two terms are found.” (Reply Br.
18, citing Spec. ¶¶ 6, 27, 122, 129, Table 5, for an improvement of “about
3.3%” when using patterns. Spec ¶¶ 129–130.)
We are not persuaded that Appellant’s claim limitations and
“advantages in performance” described in the specification, serve to add
significantly more, because the claims are not “directed to a specific
improvement to computer functionality” but instead relate to “use of []
abstract mathematical formula[s] on any general purpose computer.” Enfish,
822 F.3d at 1338. The limitations identified by Appellant appear to enlarge
and refine the ability of a general purpose computer to perform the
mathematical calculations used to “extract[] opinion-related patterns” as
recited in the preamble of claim 1.
Further, the “advantages in performance” cited by Appellant requires
a “first term with an ambiguous polarity” and Appellant identifies no such
limitation in the claims; this additionally contradicts Appellant’s assertion
that “As in McRO, where the claims at issue were found to satisfy §101, the
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rules (‘patterns’) claimed here provide improvements over the existing
process, as demonstrated in the Examples.” (Reply Br. 19, citing McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016).)
Appellant finally argues that the claims do not preempt the field,
because “very particular steps must be carried out and/or claim features must
be satisfied” and because there are “numerous non-infringing alternatives
that are significant and substantial.” (Reply Br. 21.) That the claims do
not preempt all forms of the abstraction or may be limited to opinion-related
pattern extraction, does not make them any less abstract. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015).
Because Appellant’s claims are directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s 35 U.S.C.
§ 101 rejection of the pending claims.

DECISION
The Examiner’s decision rejecting claims 1–26 is affirmed.
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)(iv).

AFFIRMED