Ex Parte Bufe et al

Patent Trial and Appeal Board

Feb 20, 2018

14090152 (P.T.A.B. Feb. 20, 2018)

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.
14/090,152 11/26/2013 John P. Bute AUS920120367US2 4844
75916 7590
IBM AUS IPLAW (GLF)
c/o Garg Law Firm, PLLC
4521 Copper Mountain Lane
Richardson, TX 75082
EXAMINER
LELAND III, EDWIN S
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
dpandy a @ garglaw. com
uspto@garglaw.com
garglaw @gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN P. BUFE, DONNA KAREN BYRON,
ALEXANDER PIKOVSKY, and EDWARD E. SEABOLT
Appeal 2017-007705
Application 14/090,1521
Technology Center 2600
Before LARRY J. HUME, JUSTIN BUSCH, and CARL L. SILVERMAN,
Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-3 and 7-9, which constitute the only claims
pending. Claims 4-6 are cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 The real party in interest is identified as International Business
Machines Corporation. App. Br. 2.
Appeal 2017-007705
Application 14/090,152
STATEMENT OF THE CASE
The claimed invention relates to “disambiguation of dependent
referring expression in natural language processing.” Abstract; Spec. 1-
6. Claim 1, reproduced below, is exemplary of the subject matter on appeal:
1. A method for disambiguation of dependent referring
expression in natural language processing, the method
comprising:
selecting a portion of a document in a set of documents, the
portion including a set of dependent referring expression instances;
filtering the portion to identify an instance from the set of
dependent referring expression instances by using a linguistic
characteristic of the instance, the instance of dependent referring
expression referring to a full expression, the full expression occurring
in another document in the set of documents;
locating the full expression in one member document in the set
of documents by locating where the dependent referring expression is
defined to be a stand-in for the full expression; and
resolving, using a processor and a memory, the instance using
the full expression such that information about the full expression is
available at a location of the instance, wherein the resolving
comprises:
modifying the instance by adding data at a location of the
instance, such that the data makes the information about the full
expression accessible from the location of the instance;
modifying the document to produce a second document,
wherein the second document includes a mapping between the
instance and the full expression in a metadata section of the
second document, the metadata section being distinct from a
location of the instance; and
linking the instance to the mapping using a link, wherein
the link is usable to make the information about the full
expression accessible from the location of the instance.
App. Br. 13.
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THE REJECTION
Claims 1-3 and 7-9 are rejected as patent-ineligible under 35 U.S.C.
§101 because the claimed invention is directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea) without
significantly more. Final Act. 3—4.
ANALYSIS
Appellants argue the Examiner fails to establish a prima facie case for
rejection and errs in concluding the rejected claims are directed to an
abstract idea as the conclusion is based on inadequate reasoning and is
conclusory. App. Br. 8-11; Reply Br. 2-7. According to Appellants, the
Examiner improperly omits steps from the analysis and these steps, e.g.,
filtering, are significantly more than merely "comparing new and stored
information and using rules to identify options." App. Br. 9-10.
The Examiner determines “claim 1 is directed to a method for
selecting a portion of a document, filtering it to identify a dependent
expression, locating the corresponding full expression in another document,
modifying the document to create a second document to make the full
expression accessible and including a mapping link in a metadata section.”
Final Act. 3. The Examiner observes:
This is similar to "comparing new and stored information and
using rules to identify options" (Smartgene: 17 see Section
IV.B.4, Federal Register, Vol. 79, No. 241, dated Tuesday,
December 16, 2014, page 74622), "using categories to organize,
store, and transmit information" (Cyberfone: 18 see Section
IV.B.5, Federal Register, Vol. 79, No. 241, dated Tuesday,
December 16, 2014, page 74622), and "organizing information
through mathematical correlations" (Digitech: 19 see Section
IV.C.l, Federal Register, Vol. 79, No. 241, dated Tuesday,
December 16, 2014, page 74622), each of which the courts have
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found to be abstract. Therefore, the claims are held to be drawn
to an abstract idea.
Id.
the additional elements in the independent claims are a processor
and memory, which appear to be "adding the words "apply it" (or
an equivalent) with the judicial exception, or mere instructions
to implement an abstract idea on a computer;" and "simply
appending well-understood, routine and conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception" (Federal Register, Vol. 79,
No. 241, dated Tuesday, December 16, 2014, page 74624). All
of the identified additional elements taken into consideration
individually and in combination fail to amount to significantly
more than the abstract idea above. See Federal Register, Vol. 79,
No. 241, dated Tuesday, December 16, 2014, page 74624,
column 2 for considerations for determining whether a claimed
elements amounts to significantly more than the judicial
exception itself.
Id. at 3—4.
In the Answer, the Examiner addresses Appellants’ arguments and
presents additional analysis to support the conclusion that the rejected claims
are directed to ineligible subject matter. Ans. 3-13.
The Examiner determines the mapping between the abstract idea in
the claims and the abstract idea of "comparing new and stored information
and using rules to identify . . . options" from Smartgene, Inc. v. Advanced
Biological Laboratories, SA, 555 Fed. Appx. 950, 955 is very clear. Id. at 7.
In particular, the Examiner determines:
The abstract idea in the claims is "selecting a portion of a
document (New information), filtering it to identify a dependent
expression (Comparing new information with stored
information (filter)), locating the corresponding full expression
in another document, modifying the document to create a second
document to make the full expression accessible from the
dependent expression and including a mapping link in a metadata
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section (Using rules to identify options (the remaining steps
use rules to identify what to do))". Nowhere does the Appellant
argue that the claims are not like the abstract ideas cited in the
rejection, only that Examiner hasn't proved that they are like the
cited abstract ideas. Given current guidance as set forth in the
Federal Register & May 4, 2016 memorandum, the Examiner
believes that the burden of proof has been met.
Id.
As discussed, supra, the Examiner determines the abstract idea in the
claims is “selecting a portion of a document, filtering it to identify a
dependent expression, locating the corresponding full expression in another
document, modifying the document to create a second document to make the
full expression accessible from the dependent expression and including a
mapping link in a metadata section,” which encompasses all the steps of
claim 1 (hereinafter referred to as the “abstract idea” and the “disputed
abstract idea”). Id. at 8-9. The Examiner reasons that everything in claim 1,
other than the processor and memory, is directed to the abstract idea and no
claim limitation has been excluded from analysis. Id. at 9. The Examiner
reasons “[djata analysis and manipulation is by its very nature abstract, and
the only portions of the claim that are not abstract and thus additional
elements beyond the abstract idea are the processor and memory.” Id.
The Examiner then discusses court cases to further support the
conclusion that the claim is directed to an abstract idea:
“Data recognition and storage" (Content Extraction and
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343,
113 U.S.P.Q.2d 1354 (Fed. Cir. 2014)), "Collecting information,
analyzing it, and displaying certain results of the collection"
(Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119
U.S.P.Q.2d 1739 (Fed. Cir. 2016)) and "Process and Apparatus
for Identifying Locations of Probable Malfunctions" (In re
Meyer, 792 F.3d 1363, 688 F.2d 789, 215 U.S.P.Q. 193 (CCPA
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1982)), as well as the previously cited "comparing new and
stored information and using rules to identify options"
(Smartgene: 17 see Section IV.B.4, Federal Register, Vol. 79,
No. 241, dated Tuesday, December 16, 2014, page 74622),
"using categories to organize, store, and transmit information"
(Cyberfone: 18 see Section IV.B.5, Federal Register, Vol. 79,
No. 241, dated Tuesday, December 16, 2014, page 74622), and
"organizing information through mathematical correlations"
(Digitech: 19 see Section IV.C.l, Federal Register, Vol. 79, No.
241, dated Tuesday, December 16, 2014, page 74622). Being
"similar to" does not mean that the ideas are the same, only that
concepts are similar enough to support a finding through the
preponderance of the evidence that the claims are drawn to an
abstract idea.
Id. at 9.
Regarding the filtering and resolving steps, the Examiner notes these
steps are considered steps in the abstract idea analysis and, even if they were
additional steps, they do not add significantly more than the underlying
abstract idea. Id. at 10-11. The Examiner reasons that, “[e]ven if the filtering
step, the resolving step and the two modifying steps were additional steps, the
Appellant has failed to indicate why they would amount to significantly more
than the underlying abstract idea.” Id. at 10 (citing Federal Register, Vol. 79,
No. 241, dated Tuesday, December 16, 2014, page 74624, column 2 for
considerations for determining whether a claimed elements amounts to
significantly more than the judicial exception itself).
In the Reply Brief, Appellants argue the Examiner’s Answer presents
for the first time, a “colorable ‘explanation’” of the rejection, but it still fails
to satisfy the prima facie deficiency of the rejection in the Final Office
Action. Reply Br. 4. In particular, Appellants argue the Examiner does not
explain why “comparing new information with stored information” is similar
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to “filter” and such a finding is the “Examiner’s personal opinion, which is
not rooted in any fact.” Id. at 4-5. According to Appellants:
What we have here is an assortment of court decisions, each very
informed and specific in its own right, but none that addresses
any of the issue[s] at hand. Nothing cited here supports
Examiner’s opinion that "filtering" or "modifying the document
to create a second document to make the full expression
accessible and including a mapping link in a metadata section"
is in any way similar to "comparing new information with stored
information," or "data analysis and manipulation is by its very
nature abstract."
Id. at 6.
Appellants then present three arguments and refer to support from
identified court cases. Id. at 6-7. First:
Claim 1 is patentable under Alice Corporation Pty. Ltd. v. CIS
Bank International et al., Case No. 13-298 (Supr. Ct., June 19,
2014) because the claimed "method" is directed to devices that
implement a specific/particular method that solves a problem
unique to NLP (an electronically-implemented technique that
facilitates exchange of information between humans and data
processing systems (see spec. 0005); such exchanges are not a
form of exchange of information that was used prior to the advent
of computers), and therefore DDR applies Paragraphs 0016-25
of the Specification extensively describe the problems that are
addressed by the claimed invention. Thus, claims 1-3 and 7-9
comprise patentable subject-matter under 35 U.S.C. § 101, in
view of Alice Corporation Pty. Ltd., as clarified by DDR
Holdings, LLC v.Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014), and as distinct from Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, No. 2010-1544 (Fed. Cir. Nov. 14, 2014) and Synopsys
v. Mentor Graphics, 120 USPQ2d 1473 (Fed. Cir. 2016).
Id. at 6-7.
Second, a prima facie case of judicial exception under 35 U.S.C.
§ 101 has not been made because, “[b]y the recitation of a NLP in the
preamble of original claim 1 and the processor and the memory to perform at
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least some steps of the recited method, claim 1 specifically recites an article
of manufacture and therefore satisfies the first step of § 101 analysis under
Alice.” Id. at 7. Appellants further argue the Examiner fails to provide
sufficient evidence to support the second step of Alice. Id.
Third, Appellants argue “[c]laim 1 specifically recites a ‘significantly
more’ element of ‘filtering the portion [of the document],’ ‘modifying the
instance by adding data at a location,’ and ‘modifying the document
[includes a mapping between the instance and the full expression].’ Id.
(brackets in original). According to Appellants:
The above-quoted claim recitation is not directed to subject
matter that can properly be considered as "abstract" (within the
meaning of U.S. patent eligibility law). This means that: (i) the
amended claim, considered as a whole, is not directed to abstract
subject matter; and (ii) the amended claim also includes
substantially more than abstract subject matter. See, Enflsh, LLC
v. Microsoft Corp., No. 2015-1244, 2016 WL 2756255 (Fed. Cir.
May 12, 2016).
Id.
As discussed below, we are not persuaded by Appellants’ arguments
and agree, instead, with the Examiner’s findings and conclusion that the
claims are directed to ineligible subject matter in the form of an abstract
idea.
The Supreme Court in Alice Corp. Pty. Ltd. v. CIS Bank
International, 134 S. Ct. 2347 (2014) reiterated the framework set out in
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012) for “distinguishing patents that claim . . . abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355. The first step in the analysis is to determine if the claim is directed
toward a patent-ineligible concept and, if so, the second step is to determine
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whether there are additional elements that transform the nature of the claim
into a patent eligible application. Id. (citing Mayo, 566 U.S at 79, 78). The
second step searches for an inventive concept that is sufficient to ensure that
the patent amounts to significantly more than a patent on the patent-
ineligible concept. Id. (citing Mayo, 566 U.S. at 72-73).
The question is not whether claims mention a computing environment
but what they are “directed to.” The “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded subject matter.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015); see Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1376,
(Fed. Cir. 2016) (inquiring into “[t]he focus of the claimed advance over the
prior art”); Enfish, 822 F.3d at 1335. “The ‘abstract idea’ step of the inquiry
calls upon us to look at the ‘focus of the claimed advance over the prior art’
to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)). “In determining the eligibility of
respondents’ claimed process for patent protection under § 101, their claims
must be considered as a whole.” Diamond v. Diehr, 450 U.S. 175, 188
(1981).
We agree with the Examiner’s determination that the claims are
directed to the disputed abstract idea, discussed supra. Ans. 8-9. Moreover,
we determine the claims can be performed by a human using a pen and
paper because it is the organization and comparison of data and is similar to
other concepts that have been identified as abstract by the courts, such as
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using categories to organize, store and transmit information or comparing
new and stored information using rules to identify options. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson”); Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F.
App’x 988 (Fed. Cir. 2014); SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 F. App’x 950 (Fed. Cir. 2014)). Further, merely
combining several abstract ideas does not render the combination any less
abstract. RecogniCorp, LLCv. Nintendo Co., Ltd., 855 F.3d 1322, 1327
(Fed. Cir. 2017) ("Adding one abstract idea ... to another abstract idea . . .
does not render the claim non-abstract."); see also FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (determining the
pending claims were directed to a combination of abstract ideas).
We conclude the claims are distinguishable from the type of claim
recently considered by the court in Enfish, 822 F.3d 1327, and further
conclude the claims are not “directed to an improvement in the functioning
of a computer,” as was found by the court regarding the subject claim in
Enfish {id. at 1338), because the pending claims recite conventional
computer elements without addressing improvements to the functioning of a
computer.
Appellants’ reliance on DDR is misplaced as the recited claims do not
improve the computer or underlying technology. In DDR, the claims at
issue involved, inter alia, “web page[] displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants” (claim 1 of US 7,818,399). The
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Federal Circuit found the claims in DDR to be patent-eligible under step two
of the Mayo/Alice test because “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” DDR Holdings, 773 F.3d at 1257.
Specifically, the Federal Circuit found the claims addressed the “challenge
of retaining control over the attention of the customer in the context of the
Internet.” Id. at 1258. The rejected claims are dissimilar to DDR's web
page with an active link, and the Specification does not support the view that
the computer related claim elements are unconventional. See Spec. 32-
42, 54, 86-89.
Although the Examiner indicates the claims are not unpatentable over
cited prior art (Final Act 4-5), this is unpersuasive, as it is directed to a
separate statutory requirement under 35 U.S.C. § 103. Our reviewing court
guides that “[eligibility and novelty are separate inquiries.” Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed
Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016) (holding that “even assuming” that a particular
claimed feature was novel does not “avoid the problem of
abstractness”). “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) (emphasis
added). Moreover, “a claim for a new abstract idea is still an abstract
idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016).
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The Examiner notified Appellants of the reasons for the rejection
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.”
35 U.S.C. § 132(a). In doing so, the Examiner set forth a prima facie case of
unpatentability such that the burden shifted to Appellants to demonstrate that
the claims are patent-eligible. On the record before us, Appellants have not
met this burden.
We note the introduction of a “processor of a computer system” into
the claims to implement an abstract idea is not a patentable application of the
abstract idea. Alice, 134 S. Ct. at 2357-58. The computer implementation
here is purely conventional and performs basic functions. See id. at 2359-
60. Appellants do not adequately show how the claimed steps are done
technically such that they cannot be done manually or that they are not
routine and conventional functions of a generic computer. See Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (“the
limitations of claim 17 involve arranging a hierarchy of organizational and
product groups, storing pricing information, retrieving applicable pricing
information, sorting pricing information, eliminating less restrictive pricing
information, and determining the price. All of these limitations are well-
understood, routine, conventional activities previously known to the
industry.”).
In view of the above, we sustain the rejection of claim 1, and
dependent claims 2, 3, and 7-9, as the Examiner’s findings and conclusions
regarding these claims have not been separately rebutted. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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DECISION
We affirm the Examiner’s decision rejecting claims 1-3 and 7-9
under 35 U.S.C. § 101.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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