Ex Parte Dohring et al

Patent Trial and Appeal Board

Jan 25, 2018

12946538 (P.T.A.B. Jan. 25, 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.
12/946,538 11/15/2010 Doug Dohring 40288-701.201 1188
21971 7590 01/29/2018
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
ZAMAN, SADARUZ
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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):
patentdocket @ wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUG DOHRING, WILLIAM MCCAFFREY,
STEPHANIE YOST, DAVID HENDRY, and LEE BORTH
Appeal 2016-007843
Application 12/946,538
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHELLE R. OSINSKI and
THOMAS F. SMEGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
5, 7—62, and 64—67. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-007843
Application 12/946,538
CLAIMED SUBJECT MATTER
The claims are directed to an online immersive and interactive
educational system. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An online immersive and interactive computer-based
educational system for children aged about 1 to about 10 years,
comprising:
(a) a digital processing device that is connected to the Internet
comprising an operating system configured to perform
executable instructions and a memory device;
(b) visual and audio content provided to the digital processing
device via the Internet, and at least partially stored in the memory
of the digital processing device, that creates an immersive and
interactive computer-based educational environment for a child
aged about 1 to about 10 years, wherein the computer-based
educational environment is further characterized by comprising:
i. at least three subjects available to the child, within the
computer-based educational environment, wherein each
subject comprises a plurality of levels of learning;
ii. a plurality of computer-based activities associated with
each subject; wherein the plurality of computer-based
activities teaches toward one or more educational
objectives in a subject; wherein the plurality of computer-
based activities consists essentially of activities teaching
toward one or more educational objectives in a subject;
wherein the plurality of computer-based activities
associated with each subject includes a book and at least
one additional activity; wherein one or more of the
plurality of computer-based activities comprises a
plurality of skill levels and wherein a mentor to the child,
the child, or the computer-based educational system
selects a skill level appropriate for the child, wherein the
computer-based educational system automatically selects
a skill level appropriate for the child based on one or more
of: age, performance in previously completed activities,
and the number of times the child has completed the
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activity, the skill level related to the difficulty of the
activity and the actions required to complete the activity;
iii. a software module for monitoring the progress of the
child in each of the subjects;
iv. a software module for rewarding the child for
completing an activity; and
v. a software module for creating an avatar to represent the
child; provided that the computer-based educational
environment, the subjects within the computer-based
educational environment, and the plurality of computer-
based activities are suitable for the child aged about 1 to
about 10 years with regard to educational objective,
content, interface, and difficulty.
REJECTIONS
Claims 1—5, 7—62, and 64—67 are rejected under 35U.S.C. 101
because the claimed invention is directed to non-statutory subject matter.
OPINION
The claims are argued as a group for which we select claim 1 as
representative under 37 C.F.R. § 41.37(c)(l)(iv). We agree with and adopt
as our own the Examiner’s analysis of claim 1. See Final Act. 3^4; Ans. 6—
10. We add the following discussion for emphasis.
Initially, Appellants analogize their claims to, inter alia, those held
eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014), asserting that “the pending claims recite a specific technological
solution.” App. Br. 11; Reply. Br 6—9. However, in making this argument
Appellants do not direct our attention to any specific claim language that
describes the purported specific technological solution. Appellants identify
the problem as “how to engage and retain particular website visitors.” App.
Br. 11. “[C]reat[ing] ‘an immersive and interactive computer-based
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educational environment’” certainly is not a specific solution to that
problem. The generic components of that environment, i) subjects, ii)
educational activities of various skill levels, iii) progress monitoring, iv)
rewards, and v) an avatar, cannot reasonably be said to create a specific
solution so as to remove the claimed subject matter from the realm of the
abstract. See Reply. Br. 6 (“This is realized through specific unconventional
elements that recite specific features for creating an avatar of the child,
monitoring the child’s progress, and rewarding the child”). The “immersive
and interactive computer-based educational environment” is defined by a
series of broad generic goals common to most educational systems.
Appellants do not identify, and we are not apprised of any claim language,
confining the claimed subject matter to a specific and non-abstract solution.
Appellants next argue the absence of preemption. App. Br. 11—15;
Reply Br. 10—11. The Examiner does not discuss preemption at length.
Ans. 8—9. Nevertheless, we cannot agree with Appellants that claim 1 does
not have a preemptive effect, foreclosing basic tools of teaching.
In Gottschalk v. Benson, (409 U.S. 63, 67 (1972)), the Court, citing
O’Reilly v. Morse (56 U.S. 62 (1853)), cautioned that a claim “so abstract
and sweeping as to cover both known and unknown uses” is not directed to
patent-eligible subject matter under 35 U.S.C. § 101. Gottschalk v. Benson,
409 US at 68. In Alice Corp. v. CLS Bank Int’l (134 S. Ct. 2347, 2354
(2014)), the Supreme Court reaffirmed this principle:
We have long held that this provision contains an important
implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable. We have interpreted § 101 and
its predecessors in light of this exception for more than 150 years.
We have described the concern that drives this exclusionary
principle as one of pre-emption. Laws of nature, natural
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phenomena, and abstract ideas are the basic tools of scientific
and technological work. [Monopolization of those tools through
the grant of a patent might tend to impede innovation more than
it would tend to promote it, thereby thwarting the primary object
of the patent laws. We have repeatedly emphasized this concern
that patent law not inhibit further discovery by improperly tying
up the future use of these building blocks of human ingenuity.
Alice Corp. Pty. Ltd. v. CIS Bank Inti, 134 S. Ct. at 2354 (quotations and
citations omitted).
In arguing the absence of preemption, Appellants reiterate the five
limitations summarized above, without delving into each one specifically,
and summarily conclude there is sufficient particularity so as to avoid a
preemptive effect. App. Br. 13. This is certainly untrue of limitations iii—v.
Limitation iii recites, “a software module for monitoring the progress of the
child in each of the subjects.” Clearly, progress monitoring is a fundamental
teaching tool. Appellants, with this limitation, in effect, seek to preclude the
use of any conceivable “software module,”1 known or unknown, that
monitors a child’s progress in any conceivable way. The breadth of
limitation iii would impede innovation in both software and teaching. The
same is true of limitations iv and v. Clearly rewards are a fundamental
teaching tool. An “avatar,” in computing, is some icon or figure
representing a person. This can be simply a computer-based version of a
name or picture in a record book or wall chart used to track a student’s
1 Appellants make no assertion that the term “module” is sufficiently similar
to “means” so as to invoke 35 U.S.C. § 112, sixth paragraph. Thus, we do
not analyze the claims under § 112, paragraph six. See, e.g., In Re Avid
Identification Systems, Inc., 504 Fed. App’x. 885 (Fed. Cir. 2013)
(nonprecedential) (arguments that claims limitations should be construed as
means-plus-fimction limitations under 35 U.S.C. § 112, paragraph six, may
be waived)
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progress. These are also fundamental teaching tools. Limitations iv and v
would impede any and all developments in software or teaching
methodologies that provide a reward, or create an avatar, for a student. We
recognize the language “software module” in limitations iii—v could be
argued to limit the preemptive effect on teaching itself. But it cannot
reasonably be argued that “software” is not such a common tool in a
teaching environment in the current state-of-the-art that the monopolization
of all software-based systems and methods directed to achieving the goals
enumerated in limitations iii—v would lack a preemptive effect.
We will not analyze all aspects of limitation ii as Appellants have
declined to do. See 37 C.F.R. § 41.37(c)(l)(iv)(“The arguments shall
explain why the examiner erred as to each ground of rejection contested by
appellant. . . . [A]ny arguments or authorities not included in the appeal brief
will be refused consideration by the Board for purposes of the present
appeal”). However, we note this limitation suffers from the same flaws as
those of the limitations discussed above. It recites broad and abstract goals,
without limitation to the specific structures, steps or algorithms employed
for achieving those goals. For example, the language, “wherein the plurality
of computer-based activities teaches toward one or more educational
objectives in a subject [and] consists essentially of activities teaching toward
one or more educational objectives in a subject” covers the use of any
known or unknown computer-based activity, used to teach by any known or
unknown methodology, any conceivable objective in any conceivable
subject. The “consists essentially of’ language only precludes the presence
of non-educational activities in the teaching environment. Restricting non-
educational activities is also a fundamental tool that may be used by an
educator. Allowing patent protection for claims containing such broad
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abstract language would lead to the effective monopolization of fundamental
teaching techniques when used in a computer environment and inhibit, rather
than promote, progress in the teaching and computer arts. This runs counter
to the objectives of our patent laws.
A limitation recited with particularity in claim 1, subparagraph i, is
the number of “subjects available to the child:” “at least three.” However,
this is one of several generic and conventional recitations, such as
“computer-based”; “digital processing device”; “Internet”; “memory”;
“visual and audio content” that does not transform patent-ineligible subject
matter into patent-eligible subject matter. See Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. at 2358—59 (Generic recitations “cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.”). Thus, we
agree with the Examiner that claim 1 lacks “significantly more” so as to be
directed to non-abstract subject matter. Ans. 9-10. Appellants quote several
limitations from claim 1 without any explanation or analysis as to how or
why they are directed to subject matter neither generic nor conventional.
App. Br. 15—16. The basis for Appellants’ argument in this regard is the
absence, or withdrawal, of a prior-art rejection on claim 1. We reject
Appellants’ contention that the absence of a rejection under §§ 102 or 103(a)
provides evidence that the claimed subject matter is neither generic nor
conventional. App. Br. 16—20. The avoidance of piecemeal examination is
merely a preferential examination practice. See MPEP § 707.07(g). How an
Examiner chooses to allocate time and resources is ultimately a procedural
matter within the Examiner’s discretion. The absence of a prior-art rejection
does not create any binding legal effect for purposes of an analysis under §
101. Appellants have elected not to identity with specificity what particular
aspects of the claimed subject matter could be considered non-generic and
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non-conventional or what specific solution creates an improvement in the
field. App. Br. 16—20. Claim 1 appears to be nothing more than the
application of conventional teaching methodologies to a computer-based
environment. We agree with the Examiner’s analysis that this subject matter
is not eligible for patent protection under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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