Ex Parte Cookson et al

Patent Trial and Appeal Board

Sep 25, 2017

13739569 (P.T.A.B. Sep. 25, 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.
13/739,569 01/11/2013 Bennett Cookson JR. 84304-861531 (001210US) 1612
20350 7590 09/27/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
GISHNOCK, NIKOLAI A
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENNETT COOKSON JR., KEN BOYER,
JAMES MARK HAMILTON, KENDALL J. JEFFERSON,
DAREN THAYNE, and MICHAEL J. WOLFGRAMM
Appeal 2016-008335
Application 13/739,569
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008335
Application 13/739,569
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE CLAIMED SUBJECT MATTER
The claims are directed to “computer-based genealogy investigation
tools.” Spec. 13. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A computerized method of consolidating
genealogy data, comprising:
at a host computing system, receiving
genealogy data from at least one source;
creating one or more individual node
records and one or more individual link records
using the genealogy data, wherein:
each individual node record of the one
or more individual node records comprises
at least name data, and
each individual link record of the one or
more individual link records comprises
relationship data that represents a
relationship between multiple individual
node records;
performing a first comparison of a pair of
individual node records, wherein
the pair of individual node records
comprises a first individual node record and
a second individual node record; and
the first comparison comprises
comparing the first individual node record
to the second individual node record;
determining a first comparison score that
each individual node record of the pair of
2
Appeal 2016-008335
Application 13/739,569
individual node records represents a same
person;
after determining the first comparison score,
performing a relationship correlation for the
pair of individual node records, wherein the
relationship correlation comprises:
identifying a first related individual
node record that is related to the first
individual node record;
identifying a second related individual
node record that is related to the first
individual node record;
identifying a third related individual
node record that is related to the second
individual node record;
identifying a fourth related individual
node record that is related to the second
individual node record;
performing a second comparison of the
first related individual node record to the
third related individual node record;
performing a third comparison of the
second related individual node record to the
fourth individual node record;
determining a second comparison score
that the pair of individual node records
represent the same person using the first
comparison score, the second comparison,
and the third comparison; and
based on the second comparison score
exceeding a predetermined threshold,
determining that the pair of individual node
records represent the same person; and
consolidating the information from the pair
of individual node records into a single
individual node record by, at least in part,
adding information from the pair of individual
node records determined to represent the same
3
Appeal 2016-008335
Application 13/739,569
person to the single individual node record,
wherein
the second comparison score is different
from the first comparison score;
the first comparison score is represented
by a plurality of individual correlation
factors;
the second comparison score is
represented by a plurality of relationship
correlation factors;
the plurality of relationship correlation
factors is different from the plurality of
individual correlation factors; and
the second comparison score is
determined by taking into account of the
plurality of relationship correlation factors.
REJECTION
Claims 1—21 are rejected under 35U.S.C. § 101 as directed to
nonpatentable subject matter. Final Act. 2.
ANALYSIS
The claims are argued as a group. App. Br. 7—15. We select claim 1
as representative. 37 C.F.R. § 41.37(c)(l)(iv).
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. But this provision contains an important implicit
exception: laws of nature, natural phenomena, and abstract ideas are not
patentable. See Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014);
Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific and technological
4
Appeal 2016-008335
Application 13/739,569
work.”). Notwithstanding that a law of nature or an abstract idea, by itself,
is not patentable, an application of these concepts may be deserving of
patent protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1293—94 (2012). In Mayo, the Court stated that “to
transform an unpatentable law of nature into a patent-eligible application of
such a law, one must do more than simply state the law of nature while
adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and 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 whether the claims at issue are directed to one
of those patent-ineligible concept.” Id. If the claims are directed to a patent-
ineligible concept, then 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 1297, 1298).
Regarding the first step in the Alice framework, the Examiner finds
that claim 1 is directed to the abstract idea of “obtaining genealogy data,
comparing the records, determining a likelihood score that two or more
records represent the same person; and, in response to such a comparison,
consolidating the records by adding information, such as a reference or
link.” Final Act. 4; see also Ans. 9 (“The claims cover the broad concepts of
having a user, such as a genealogist, compare data on two persons to
determine if they are one in the same, and consolidating the records if so.”).
5
Appeal 2016-008335
Application 13/739,569
The Examiner characterizes this idea as one of “organizing human activity,”
and that a person could carry out the method using “pure thought alone.” Id.
Regarding Alice’s second step, the Examiner finds that the additional
limitations directed to computer implementation “are not sufficient to
amount to significantly more than” the abstract idea. Id. at 4—5. According
to the Examiner, the additional limitations require only a generic computer
to perform steps that “genealogists are capable of.” Id. at 5.
Appellants respond that they “do not necessarily agree” that the
claims are directed to an abstract idea (App. Br. 11), but do not provide
substantive arguments to support that disagreement. For example,
Appellants do not expressly dispute the Examiner’s contention that a person
could perform the claimed steps without the aid of a computer. See, e.g.,
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016) (holding that “analyzing information by steps people [can] go through
in their minds, or by mathematical algorithms, without more . . . [are] mental
processes within the abstract-idea category”).
Instead, Appellants assume arguendo that the claims are directed to an
abstract idea, and argue that “the claims recite additional details that render
them patent-eligible.” App. Br. 11. In support of this argument Appellants
first contend that claim 1 “pose[s] no risk of pre-emption of any fundamental
business practice or abstract idea” because it “will not prevent others from
‘manipulating genealogical data’ outside of the specific context of linking
and comparing individual genealogical records.” Id. (citing Alice, 134 S.Ct.
at 2355) (internal quotation marks omitted).
This argument is not persuasive. Although the Alice Court discussed
the pre-emption of abstract ideas as a basis to exclude them from patent
6
Appeal 2016-008335
Application 13/739,569
eligibility under Section 101, Alice, 134 S.Ct. at 2354, the Court did not
make a pre-emption analysis a prerequisite to determining patent
ineligibility. Nevertheless, even considering pre-emptive issues in this case,
we do not agree that claim 1 poses no risk of preemption of an abstract idea.
By arguing that claim 1 “will not prevent others from manipulating
genealogical data outside of the specific context of linking and comparing
individual genealogical records,” Appellants’ imply that claim 1 would
preempt the “linking1 and comparing [of] individual genealogical records.”
Appellants do not explain how pre-empting these activities would not
constitute preemption of that abstract idea.
Next, Appellants disagree that the claimed methods are performed on
generic computers, as the Examiner asserts. App. Br. 12. According to
Appellants, servers that implement the claimed methods “must include
specialized programming,” and the step of consolidating data from a pair of
individual node records “is not a standard receiving, computing, or
calculating operation.” Id. This argument is not persuasive. Neither claim
1 nor the Specification identifies any specialized computing device or
program that is required to perform the claimed methods. On the contrary,
the Specification states that a system capable of performing the claimed
method may contain “any suitable computing device, or combination of
1 It is not clear what Appellants mean by “linking” individual genealogical
records because none of the claims contains a “linking” step per se. Claim 1
recites genealogy data in the form of “link records” that contain data about a
subject’s family relationships (App. Br. 17; see Spec. 138), so we assume
that “linking” genealogical records means identifying familial relationships
between the subjects of different records.
7
Appeal 2016-008335
Application 13/739,569
devices, that are programmable to carry out the functions of embodiments of
the present invention.”2 Spec. 130.
Appellants further argue that claim 1 is “of the kind found eligible for
patenting in DDR Holdings, LLC v. Hotels.com, L.P.” 773 F.3d 1245 (Fed.
Cir. 2014). In DDR, the court found that claims directed to generating
websites are patent eligible because they are “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id. at 1257. Here, however, it is unclear whether
Appellants even allege that the specific claims at issue are likewise
“necessarily rooted in computer technology,” much less persuade us that
such an allegation is true.
Appellants also argue that the claims are “novel and nonobvious,” and
therefore “must not perform any longstanding business practice.” App. Br.
13. But the Federal Circuit has expressed disagreement that “the addition of
merely novel or non-routine components to the claimed idea necessarily
turns an abstraction into something concrete.” Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). To the extent that “any novelty in
implementation of [an] idea is a factor to be considered” in assessing patent
2 In the Reply Brief Appellants argue for the first time that “the step of
‘consolidating the information from the pair of individual node records into
a single individual node record’ is tantamount to ‘[effecting a
transformation or reduction of a particular article to a different state or
thing.” Reply Br. 2 (citing 2014 Interim Guidance on Patent Subject Matter
Eligibility at 74624) (alteration in original). We will not consider this new
argument because it has not been accompanied by a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. See Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI 2010)
(informative); 37 C.F.R. § 41.41(b)(2).
8
Appeal 2016-008335
Application 13/739,569
eligibility, it is relevant only to the second step of Alice, and would have to
“transform^ the claimed abstract idea into patent-eligible subject matter.”
Id. (citing Alice, 134 S.Ct. at 1294). We are not persuaded that the mere fact
that the claims may not “perform any longstanding business practice”
transforms the claimed abstract idea into patent-eligible subject matter.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—21 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)(l)(iv).
AFFIRMED
9