Ex Parte Byron et al

Patent Trial and Appeal Board

Feb 13, 2019

14135214 (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/135,214 12/19/2013 Donna K. Byron
50170 7590 02/13/2019
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17304 PRESTON ROAD
SUITE 200
DALLAS, TX 75252
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
AUS920130272US 1 8051
EXAMINER
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
02/13/2019 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 DONNA K. BYRON, DUKE C. CHANG,
LEANNE N. LEBLANC, and ALEXANDER PIKOVSKY
Appeal2017-010866
Application 14/135,214
Technology Center 3600
Before JEAN R. HOMERE, JOSEPH P. LENTIVECH,
and DAVID J. CUTITTA II, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 9-20. 1 App. Br. 4. Claims 1-8 have been canceled. Claims App'x.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as International Business
Machines Corp. App. Br. 2. The Final Action cover sheet (PTOL-326), and
Appellants' claims Appendix indicate that claims 9-24 are pending.
However, the corpus of the final rejection, and Appellants' Appeal Brief
indicate that claims 9-20 are pending. Final Act. 2, App. Br. 4. Claims 21-
24 were added in the amendment filed June 15, 2016, and are therefore
pending in this application. Because claims 21-24 are not currently rejected,
they are not on appeal before us.
Appeal2017-010866
Application 14/135,214
Introduction
According to Appellants, the claimed subject matter relates to configuring a
Question and Answer system (e.g., the Watsonâ„¢ QA system) (100) to
implement a pipeline (108) for answering questions based on inputs received
from various sources in a network (102) including a corpus of electronic
documents (106), computing devices (104, 110, 112) containing databases
for storing the documents. Spec. ,r,r 64---65, Fig. 1. In particular, upon
receiving an input question, the Watsonâ„¢ QA system (100) parses major
features of the question to formulate queries that are applied to the corpus
data to generate a set of hypotheses or candidate answers to the question. Id.
,r 67. More particularly, upon receiving the input question, the Watsonâ„¢
QA system (100) analyzes the corpus of unstructured electronic documents,
and utilizes a flow model generator (120) to generate an asset transfer flow
model (130) defining a flow of an asset between entities based on the one or
more asset transfer flow relationships between entities. The Watsonâ„¢ QA
system ( 100) then inputs the asset transfer flow model into its analysis
engine to generate results of the analysis based on the one or more asset
transfer flow relationships between entities represented in the generated
asset transfer flow model (130). Id. ,r,r 68-70, 92-93. Each subsequently
identified asset transfer flow relationship is added to the asset transfer flow
model (130) to extend the asset transfer flow model 395. Id. ,r,r 92-94. This
process may be repeated with each additional flow identified through the
processing of the corpus (34 7) until no further flows are identified. Id.
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Application 14/135,214
Representative Claim
Claims 9 and 1 7 are independent. Independent claim 9 is
representative, and is reproduced below with limitation at issue italicized:
9. A computer program product comprising a non-transitory
computer readable medium having a computer readable program
stored therein, wherein the computer readable program, when
executed on a data processing system, configures the data processing
system to implement an electronic content analysis system that
operates to:
perform analysis of a corpus of unstructured electronic
documents to identify one or more asset transfer flow relationships
between entities in unstructured natural language content of the
unstructured electronic documents, wherein asset flow relationships
indicate a flow of an asset from a first entity to at least one second
entity and a type of flow of the asset from the first entity
to the at least one second entity;
generate an asset transfer flow model defining a flow of an
asset between entities based on the one or more asset transfer flow
relationships between entities;
input the asset transfer flow model into an analysis engine of
the electronic content analysis system to configure the analysis engine
to use the asset transfer flow model to analyze electronic content;
analyze the electronic content using the analysis engine
configured with the asset transfer flow model to generate results of the
analysis based on the one or more asset transfer flow relationships
between entities represented in the asset transfer flow model; and
output the results of the analysis based on the asset transfer
flow model.
References Relied Upon
De Vocht US 2011/0301941 Al
Zuev US 2012/0010872 Al
Pell et al. (Pell) US 8,463,593 B2
Elnikety et al. (Elnikety) US 2014/0172914 Al
Sam et al. (Sam) US 2014/0280352 Al
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Dec. 8, 2011
Jan. 12,2012
June 11, 2013
June 19, 2014
Sept. 18, 2014
Appeal2017-010866
Application 14/135,214
Rejections on Appeal
Claims 9-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2-3.
Claims 9-13 and 17-19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of De Vocht and Sam. Final Act. 3-8.
Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of De Vocht, Sam, and Elnikety. Final Act. 8-9.
Claims 15 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of De Vocht, Sam, and Zuev. Final
Act. 9-10.
Claim 16 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of De Vocht, Sam, and Pell. Final Act. 10-11.
ANALYSIS 2
§ 1 OJ Rejection
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
2 We refer to Appellants' arguments and the Examiner's findings and
conclusions set forth in the Final Office Action (mailed October 3, 2016)
("Final Act."), the Appeal Brief (filed February 10, 2017) ("App. Br."), the
Answer (mailed June 27, 2017) ("Ans."), and the Reply Brief (filed August
18, 2017) ("Reply Br.") for the respective details.
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Application 14/135,214
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
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Application 14/135,214
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an "'inventive
concept"' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221. "A claim that recites an
abstract idea must include 'additional features' to ensure 'that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea]."' Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). "[M]erely
requir[ ing] generic computer implementation[] fail[ s] to transform that
abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum").
Under that guidance, the office first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
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Application 14/135,214
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Appellants argue the Examiner erred in concluding that claims 9-24
are directed to the abstract idea of"( comparing search queries against a
database to obtain results) generating a structured data (asset transfer flow
model) and analyzing a search query (content) using the structured data
and outputting the result to a user." App. Br. 5. According to Appellants,
the Examiner's conclusion is devoid of any meaningful analysis as to how
any of the recitations is directed to an abstract idea. Id. at 7. Instead,
Appellants submit that the claims are directed to configuring a specific
computing environment, which analyzes a corpus of unstructured electronic
documents to learn asset flow relationships for generating an asset flow
model, which is in tum used to configure an analysis engine of the
computing environment. Id. at 8. Appellants conclude that because the new
configuration of the analysis engine is used to process other electronic
content, the claim is directed to performing self-improvement of the
computing environment. Id. at 10.
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These arguments are persuasive. As an initial matter, we note the
method of independent claim 9 recites, inter alia, "a computer program
product," which is categorized as an article of manufacture, one of the
recognized statutory classes of inventions. Further, we agree with
Appellants that the Examiner's determination that the functions of the data
processing system recited in the claim are tantamount to an abstract idea is
conclusory. As persuasively argued by Appellants, the claimed subject
matter is directed to configuring an electronic analysis system that analyzes
a document to identify asset transfer flow relationships between entities to
generate an asset transfer flow model, which is fed back to the electronic
engine analysis system for subsequently analyzing other documents. As
such, we agree with Appellants that the claimed recitations are not directed
to a method of organizing human activities, or mental steps. Furthermore,
we agree with Appellants that even if the claimed functions were directed to
the cited abstract idea, the claim integrates the noted judicial exception into a
practical application because it recites an additional element reflecting an
improvement in the functioning of a computer, or an improvement to other
technology or technical field. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1258-59 (Fed. Cir. 2014). In particular, the claim recitation,
"input the asset transfer flow model into an analysis engine of the electronic
content analysis system to configure the analysis engine to the asset transfer
flow model to analyze electronic content" implements the recited functions
with a particular machine or manufacture that is integral to the claim. We,
therefore, determine claim 9 is directed to patent eligible subject matter.
Accordingly, we do not address Step 2B of the Revised Guidance
( corresponding to step two of the Alice/Mayo test).
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Application 14/135,214
For the foregoing reasons, we do not sustain the Examiner's patent
ineligibility rejection of claim 9, as well as claims 10-20, which recite
similar limitations.
§ 103 Rejection
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains."' KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) ("KSR"). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966).
Appellants argue that the Examiner erred in rejecting claim 9 over the
combination of De Vocht and Sam because neither reference teaches or
suggests generating an asset transfer flow model based on identified asset
transfer relationships to configure an analysis engine, which uses the model
to analyze other documents. App. Br. 29-30. In particular, Appellants
argue that while Sam's disclosure in Figure 3 of "I spent $50.00 today"
teaches an asset, it does not teach the disputed limitation. Id. at 34. This
argument is persuasive.
At the outset, we note the Examiner relies upon the combination of De
Vocht and Sam to teach the disputed limitations as follows:
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Application 14/135,214
De Vocht in view of Sam teaches a system and method for
processing semi-structured data [incudes unstructured data, ,r 4;
fig.3 # 302] and converting (generating) the semi-structured
data to a structured data [an asset transfer flow model; fig.3 #
308, see also ,r 58]. Wherein the asset is a monetary funds
[fig.3, ,r,r 34, 36, 39, 41, 58, 60]. Ans. 24.
Sam discloses an extraction engine that analyzes the statement "I
spent $50.00 today" to map the statement to a database table. Sam ,r 60.
Although the disclosed transfer of an asset ($50.00) from a first entity
(payee) to a second entity (payor) teaches an identified asset transfer
relationship between the two entities, we agree with Appellants that Sam
does not teach using the identified asset transfer relationship to generate an
asset transfer flow model for configuring the extraction engine to
subsequently analyze other documents. Instead, Sam teaches analyzing the
identified statement to map it to corresponding fields of a relational
database, as correctly argued by Appellants. We therefore agree with
Appellants that the cited disclosure of Sam does not cure the admitted
deficiencies of De Vocht's system, which merely analyzes statements in a
document to identify similar statements in other documents. App. Br. 29-
31, Reply Br. 20.
Because Appellants have shown at least one reversible error in the
rejection of claim 9, we need not reach Appellants' remaining arguments.
Accordingly, we do not sustain the Examiner's obviousness rejection of
independent claim 9. Likewise, we do not sustain the rejection of
independent claim 17, which recites the disputed limitations.
Because claims 10-16 and 18-20 depend from independent claims 1
and 17 discussed above and necessarily incorporate all of their limitations,
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we do not sustain the obviousness rejection of the cited dependent claims for
the same reasons.
DECISION
For the above reasons, we reverse the patent ineligibility rejection as
well as the obviousness rejections of claims 9-20.
REVERSED
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