Ex Parte Dohring et al

Patent Trial and Appeal Board

Jul 20, 2018

13827566 (P.T.A.B. Jul. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/827,566 03/14/2013
21971 7590 07/24/2018
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
FIRST NAMED INVENTOR
Doug Dohring
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.
40288-714.201 2131
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/24/2018 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, LEE BORTH and
NATHAN DROBNACK
Appeal2017-005532
Application 13/827,566
Technology Center 3700
Before STEVEND.A. McCARTHY, MICHELLE R. OSINSKI and
PAUL J. KORNICZKY, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1 STATEMENT OF THE CASE
2 The Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
3 decision finally rejecting claims 1-3, 5-9, 11-15, 17 and 18 under 35 U.S.C.
4 § 101 as being directed to ineligible subject matter. (See Examiner's
5 Answer, mailed Dec. 15, 2016 ("Ans."), at 2-5). We have jurisdiction under
6 35 U.S.C. § 6(b).
The Appellants identify the real party in interest as Age of Leaming,
Inc. (See "Appellant's Brief under 37 C.F.R. § 41.37," dated Oct. 13, 2016,
at 3).
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Application 13/827,566
1 We AFFIRM.
2 The appealed claims are directed to computer-based systems and
3 methods permitting a mentor to customize learning content for a student.
4 (See Spec., para. 20). Claims 1, 7 and 13 are independent. Claim 13 recites:
5 13. A computer-implemented method of educating a learner by
6 applying both computer analysis and mentor feedback to provide
7 a customized learning experience with learning activity
8 suggestions to a learner in a guided learning mode comprising
9 the steps of:
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
32
33
34
35
a.
b.
C.
d.
providing, by a computer, a population of learning
activities associated with an area of skill, interest, or
expertise;
providing, by the computer, an interface allowing a mentor
to select a plurality of learning activities from among the
population of activities associated with an area of skill,
interest, or expertise to create a subpopulation of activities
to be completed by a learner, wherein the interface allows
the learner to sort subpopulations of activities based on
each activity's association with one of more areas of skill,
interest, or expertise, and the interface further allows the
learner to complete learning activities in sequence and
freely select learning activities;
providing, by the computer, an interface displaying and
providing the learner access to the subpopulation of
learning activities, wherein the interface allows the learner
to sort subpopulations of activities based on each activity's
association with one or more areas of skill, interest, or
expertise, and the interface further allows the learner to
complete learning activities in sequence, freely select
learning activities, and remove learning activities from
subpopulations of activities;
maintaining, by the computer, a database of learner data in
a computer memory, the learner data comprising past
learner performance data including affinity for particular
learning activities, previous completion of learning
2
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
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Application 13/827,566
e.
f.
activities, speed of completion of learning activities, and
accuracy of completion of learning activities, learner
preferences including configured preference settings,
previous selections, and activity repetition, and mastery of
educational objectives including learner scores and
number of rewards earned associated with learning
activities;
automatically applying, by the computer, pattern analysis
to the learner data to suggest or recommend one or more
particular learning activities within the subpopulation of
activities to the learner; and
providing, by the computer, an interface allowing the
mentor to view and tune learner data on which suggestions
or recommendations are based by indicating, rating, or
ranking subjects, skills, education objectives, and learning
activities.
17 Claim 1 recites an "electronic educational system assembling platform ...
18 comprising: a digital processing device [ and] a computer program, provided
19 to the digital processing device, including executable instructions that create
20 an educational environment." Claim 7 recites "[n]on-transitory computer-
21 readable storage media encoded with a computer program including
22 instructions executable by a processor to create an electronic educational
23 system assembling platform." Both the educational environment recited in
24 claim 1, and the educational system assembling platform of claim 7,
25 comprise a "guided learning mode" including software modules for
26 performing substantially steps b.-f. recited in claim 13.
27
28 ISSUES
29 The Appellants' arguments do not distinguish between the respective
3 0 language of independent claims 1, 7 and 13; neither do the Appellants
3
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Application 13/827,566
1 appear to argue any dependent claim separately. Except as otherwise noted,
2 claim 13 will be taken as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
3 Even apart from this procedural consideration, it is noted that,
4 although claim 1 recites an "electronic educational system assembling
5 platform ... comprising: a digital processing device [and] a computer
6 program provided to the digital processing device, including executable
7 instructions that create an educational environment[;]" claim 7 recites
8 "[ n ]on-transitory computer-readable storage media encoded with a computer
9 program including instructions executable by a processor to create an
10 electronic educational system assembling platform[;]" and claim 13 recites
11 "a computer-implemented method of educating a learner by applying both
12 computer analysis and mentor feedback to provide a customized learning
13 experience with learning activity suggestions to a learner in a guided
14 learning mode[,]" in each case the educational environment comprises a
15 "guided learning mode" including software modules for performing
16 substantially steps c.-f. recited in claim 13. 2 In assessing a rejection for
2 Step "b." of claim 13 consists of "providing, by the computer, an
interface allowing a mentor to select a plurality of learning activities from
among the population of activities associated with an area of skill, interest,
or expertise to create a subpopulation of activities to be completed by a
learner, wherein the interface allows the learner to sort subpopulations of
activities based on each activity's association with one of more areas of skill,
interest, or expertise, and the interface further allows the learner to complete
activities in sequence and freely select learning activities." The "wherein"
clause differs substantially from the corresponding "wherein" clauses in the
software modules "a." recited in claims 1 and 7. The "wherein" clause
recited in step "b." of claim 13 may be an error, because it suggests that
learners should be given access to the mentor interface in order to sort
learning activities within the subpopulation selected by the mentor.
4
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Application 13/827,566
1 ineligible subject matter under § 101, we look not to the name or intended
2 use assigned to the claimed subject matter in the preamble, but to the nature
3 of the claimed subject matter as a whole, to determine whether the claim
4 falls within the "abstract idea" exception. See CyberSource Corp. v. Retail
5 Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011) ("Regardless of what
6 statutory category ('process, machine, manufacture, or composition of
7 matter,' 35 U.S.C. § 101) a claim's language is crafted to literally invoke,
8 we look to the underlying invention for patent-eligibility purposes.").
9 Therefore, we may treat claims 1, 7 and 13 as interchangeable for purposes
10 of eligibility under § 101.
11 The Supreme Court has established a two-step analysis for
12 determining whether the subject matter of a claim is eligible for patent
13 protection. First, one must determine whether the claim is "directed to one
14 of [the] patent-ineligible concepts," such as an abstract idea. Alice Corp. v.
15 CLS Bank Int'!, 134 S.Ct. 2347, 2355 (2014). Second, if so, one must
16 determine if the remainder of the claim recites an "inventive concept," such
17 that the claim as a whole recites a specific application of the patent-
18 ineligible concept. Id. at 2357 & 2358. The sole issue in this appeal is
19 whether the subject matter of representative claim 13 is eligible for patent
20 protection under the two-step analysis laid down by the Court.
21 We address the two steps of the test in tum. Only those arguments
22 actually made by the Appellants have been considered. Arguments that
23 the Appellants could have made, but chose not to make, have not been
24 considered and are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In
25 re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
5
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Application 13/827,566
1 DISCUSSION OF THE FIRST STEP
2 Claim 13 recites a "computer-implemented method of educating a
3 learner by applying both computer analysis and mentor feedback to provide
4 a customized learning experience." The Examiner determines that claim 13
5 is directed to the abstract idea of:
6 allowing a mentor to select a plurality of learning activities from
7 among a population of activities and [to] sort, sequence, rank,
8 and remove activities within the subpopulation; allowing a
9 learner to sort and complete learning activities; storing a set of
10 learner data; analyzing the learner data to suggest or recommend
11 learning activities; and allowing the mentor to view and tune
12 learner data.
13 (Ans. 3). The Examiner characterizes the subject matter of the claim as "a
14 series of steps for information management and managing human behavior,
15 and is an idea 'of itself akin to other arrangements that have been identified
16 as abstract ideas." (Id.)
17 The Examiner cites buySAFE, Inc. v. Google, Inc., 765 F.3d 1350
18 (Fed. Cir. 2014), as support for the Examiner's determination. (Ans. 6). In
19 fact, a number of different cases provide support for the Examiner's
20 determination that claim 13 is directed to an abstract idea.
21 The step of "providing ... an interface displaying and providing the
22 learner access to [a] subpopulation of learning activities" is properly
23 characterized as an abstract idea. In Affinity Labs of Tex., LLC v.
24 Amazon.com Inc., 838 F.3d 1266 (Fed. Cir. 2016), our reviewing court
25 addressed the eligibility of a claim for a media system for delivering
26 streaming content from a network-based resource to a handheld wireless
27 electronic device:
28 A media system, comprising:
6
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Application 13/827,566
1 a network based media managing system that maintains a
2 library of content that a given user has a right to access and a
3 customized user interface page for the given user;
4 a collection of instructions stored in a non-transitory
5 storage medium and configured for execution by a processor of
6 a handheld wireless device, the collection of instructions
7 operable when executed: (1) to initiate presentation of a
8 graphical user interface for the network based media managing
9 system; (2) to facilitate a user selection of content included in the
10 library; and (3) to send a request for a streaming delivery of the
11 content; and
12 a network based delivery resource maintaining a list of
13 network locations for at least a portion of the content, the
14 network based delivery resource configured to respond to the
15 request by retrieving the portion from an appropriate network
16 location and streaming a representation of the portion to the
17 handheld wireless device.
18 (Id. at 1267 & 1268). Our reviewing court held that this claim was directed
19 to the abstract idea of "delivering user-selected media content to portable
20 devices." (Id. at 1269).
21 Just as the system recited in the claim at issue in Affinity Labs
22 provided "a network based media managing system that maintains a library
23 of content that a given user has a right to access and a customized user
24 interface page for the given user," appealed claim 13 recites a method
25 providing both a subpopulation of learning activities that a learner may
26 access; and "an interface displaying and providing the learner access to the
2 7 subpopulation of learning activities." Appealed claim 13 recites providing a
28 specific type of media content, namely, learning activities, rather than
29 content in general. Nevertheless, any distinction between the learning
30 activities recited in appealed claim 13 and the media content at issue in
31 Affinity Labs lies in the manner in which the content is perceived and
7
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1 understood by the learner. Hence, the recitation, "displaying and providing
2 the learner access to [a] subpopulation of learning activities," is an
3 expression of an abstract idea.
4 Likewise, the steps of:
5 providing ... a population of learning activities associated with
6 an area of skill, interest, or expertise; [and]
7 providing ... an interface allowing a mentor to select a plurality
8 of learning activities from among the population of
9 activities associated with an area of skill, interest, or
10 experience to create a subpopulation of activities to be
11 completed by a learner
12 are properly characterized as an abstract idea. In Dietgoal Innovations LLC
13 v. Bravo Media LLC, 33 F. Supp. 3d 271 (SDNY 2014), aff'd 599 Fed.
14 Appx. 956 (Fed. Cir. Apr. 8, 2015), the district court addressed claims to a
15 system of computerized meal planning. Claim 1 recited:
16 1. A system of computerized meal planning, comprising:
1 7 a User Interface;
18 a Database of food objects organizable into meals; and
19 at least one Picture Menus, which displays on the User Interface
20 meals from the Database that a user can select from to meet
21 customized eating goals.
22 Id. at 274. The district court determined that the claims at issue in the case
23 "recite[ d] nothing more than the abstract concept of selecting meals for the
24 day, according to one's particular dietary goals and food preferences." Id. at
25 283.
26 In other words, claim 1 at issue in Dietgoal Innovations recited a
27 system that provided a population, that is, a database, of food objects; and
2 8 also provided an interface allowing a user to select a subpopulation of meals
29 from the population stored in the database. The analogy to the steps of
8
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Application 13/827,566
1 "providing ... a population of learning activities associated with an area of
2 skill, interest, or expertise; [ and] providing ... an interface allowing a
3 mentor to select a plurality of learning activities from among the population
4 of activities," as recited in appealed claim 13, is apparent. Indeed, because
5 the selection contemplated by appealed claim 13 is of a subpopulation of
6 learning activities to which a learner is to be granted access, which, at least
7 arguably, is more abstract than a subpopulation of food objects to be
8 consumed in a meal, the determination that the steps recited in appealed
9 claim 13 are abstract is more persuasive than the determination in Dietgoal
10 Innovations.
11 Indeed, the "select[ion of the] plurality of learning activities from
12 among the population of activities associated with an area of skill, interest,
13 or expertise to create the subpopulation of activities to be completed by a
14 learner" contemplates the performance of a mental step in a narrow sense of
15 the term. Although the Specification teaches configuring a software module
16 to allow the mentor to identify learning activities by area of skill, interest or
1 7 expertise, by activity type or by activity theme; and to present selectable
18 elements representing groups of activities of a particular type or teaching
19 toward particular learning objectives (see Spec., paras. 70-72), the
20 Specification contemplates that at least the initial selection of the plurality of
21 learning activities within a subpopulation will be performed entirely within
22 the mentor's own mind. Likewise, appealed claims 1 and 7 recite software
23 modules for "allow[ing] the mentor to sort subpopulations of [learning]
24 activities based on each activity's association with one or more areas of skill,
25 interest, or expertise, and ... further allow[ing] the mentor to sequence,
26 rank, prioritize, and remove activities within subpopulations of activities."
9
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Application 13/827,566
1 Although the software modules include instructions for receiving and
2 recording the mentor's decisions regarding sorting, sequencing, ranking or
3 prioritizing the activities, the mentor actually sorts, sequences, ranks or
4 prioritizes the activities in the mentor's own mind. (See generally Spec.,
5 paras. 79-87 ( describing input formats within which the mentor may
6 indicate choices regarding the organization of learning activities in a
7 subpopulation, but providing only cursory guidance as to criteria to be used
8 in organizing the activities)). Purely mental steps are abstract ideas.
9 Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-48 (Fed. Cir.
10 2016).
11 With respect to the steps of "automatically applying ... pattern
12 analysis to ... learner data to suggest or recommend one or more particular
13 learning activities within the subpopulation of activities to the learner; and
14 providing ... an interface allowing the mentor to view and tune learner data
15 on which suggestions or recommendations are based by indicating, rating, or
16 ranking subjects, skills, education objectives, and learning activities," our
1 7 reviewing court has held that analyzing data and presenting the results of the
18 analysis is an abstract idea. See Electric Power Group v. Alstom S.A., 830
19 F.3d 1350, 1353 & 1354 (Fed. Cir. 2016). This is particularly true where, as
20 here, the data in question is generated as a result of a learner's progress
21 through learning activities. As noted earlier, the presentation of learning
22 activities to a learner itself represents an abstract idea akin to the
23 presentation of media content to a viewer. The analysis and presentation of
24 data representative of the learner's progress through such learning activities
25 merely manipulates abstract concepts.
10
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Application 13/827,566
1 Therefore, the Examiner correctly characterizes claim 13, as a whole,
2 as directed to:
3 allowing a mentor to select a plurality of learning activities from
4 among a population of activities and [to] sort, sequence, rank,
5 and remove activities within the subpopulation; allowing a
6 learner to sort and complete learning activities; storing a set of
7 learner data; analyzing the learner data to suggest or recommend
8 learning activities; and allowing the mentor to view and tune
9 learner data.
10 (Ans. 3). The Examiner also correctly characterizes that statement as an
11 abstract idea. (See id.)
12 The Appellants argue that the method recited in claim 13 is not
13 directed to an abstract idea because it "provides technological improvements
14 by providing specific tools that improve the technical field of assembling
15 electronic educational systems." (See "Appellant's Brief under 37 C.F.R.
16 § 41.37," dated Oct. 13, 2016 ("App. Br."), at 15). This argument is not
17 persuasive because assembling electronic educational systems is not a
18 technical field. An electronic educational system, as described in the
19 application underlying this appeal, allows a mentor to select learning
20 activities, that is, media content, for one or more learners to work through.
21 As such, assembling electronic educational systems is an abstraction, not a
22 technical field. Hence, claim 13 does not provide technological
23 improvements to a technical field.
24 The Appellants also argue that claim 13 is analogous to claims
25 determined not to be directed to abstract ideas in DDR Holdings, LLC v.
26 Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), and McRO, Inc. v. Bandai
27 Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). (See generally
28 App. Br. 16-18). The Appellants characterize the claims at issue in DDR
11
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1 Holdings as "address[ing] the problem of retaining website visitors that, if
2 adhering to the routine, conventional functioning of Internet hyperlink
3 protocol, [instantly would have been transported] away from the host's
4 website after 'clicking' on an advertisement and activating a hyperlink."
5 (See App. Br. 16). Our reviewing court held that "these claims stand apart
6 because they do not merely recite the performance of some business practice
7 known from the pre-Internet world along with the requirement to perform it
8 on the Internet." DDR Holdings, 773 F.3d at 1257. In the present case,
9 however, the appealed claims do merely recite the performance of a known
10 practice, namely, assembling electronic educational systems (see Spec., para.
11 20). The Appellants do not persuade us that the claims at issue in DDR
12 Holdings are analogous to appealed claim 13.
13 McRO addressed a claim reciting a method for "automatically
14 animating lip synchronization and facial expression of three-dimensional
15 characters." (App. Br. 17, quoting McRO at 1307 (claim 1)). Our reviewing
16 court ruled that the "claimed process uses a combined order of specific rules
17 that renders information into a specific format that is then used and applied
18 to create desired results: a sequence of synchronized, animated characters."
19 McRO at 1315. The determination that the claim at issue in McRO was not
20 directed to an abstract idea relied heavily on the court's determination that
21 the claim was "focused on a specific asserted improvement in computer
22 animation." (Id.) Although that improvement took the form of "a combined
23 order of specific rules," the mere presence of specific rules, even if intended
24 to be performed in a particular order, does not imply that a claim is directed
25 to other than an abstract idea. The Appellants do not persuade us that the
26 claims at issue in McRO are analogous to appealed claim 13.
12
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1 Finally, the Appellants argue that its claims are not directed to an
2 abstract idea because they "do not seek to tie up all ways of 'providing a
3 customized learning experience to a learner' or any other fundamental idea."
4 (App. Br. 19; see also "Appellants' Reply Brief," dated Feb. 14, 2017
5 ("Reply Br."), at 5). As discussed earlier, however, the Examiner correctly
6 determines that representative claim 13 is directed to the abstract idea of:
7 allowing a mentor to select a plurality of learning activities from
8 among a population of activities and [to] sort, sequence, rank,
9 and remove activities within the subpopulation; allowing a
10 learner to sort and complete learning activities; storing a set of
11 learner data; analyzing the learner data to suggest or recommend
12 learning activities; and allowing the mentor to view and tune
13 learner data.
14 (Ans. 3). The Appellants' argument fails to persuasively address preemption
15 in the context of this determination. We agree with the Examiner that claim
16 13 is directed to an abstract idea.
17
18 DISCUSSION OF THE SECOND STEP
19 It remains to address the second step of the analysis. The Appellants
20 argue that the Examiner has conflated the first and second steps of the
21 analysis. (See App. Br. 20). There is no sharp boundary between the first
22 and second steps. Often, the same facts and reasoning will apply both to the
23 question whether the claim is directed to an abstract idea and to the question
24 whether the claim includes "something more." Any overlap in the
25 Examiner's findings and reasoning is not determinative of whether the
26 Examiner's findings and reasoning is adequate to support a rejection.
27 In addition, the Appellants argue that the subject matter of claim 13 is
28 eligible for patent protection because the subject matter represents an
13
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1 improvement to a technical field, namely, creating web-based educational
2 environments. (See App. Br. 22). As discussed earlier, however,
3 assembling electronic educational systems is not a technical field, even if
4 implemented using computer equipment or a computer network. Because
5 the creation of web-based educational environments is not a technical field
6 for purposes of a patent eligibility analysis, the Appellants' argument is not
7 persuasive.
8 The Appellants argue that the subject matter of claim 13 is eligible for
9 patent protection because the claimed method includes "specific limitations
10 other than what is well-understood, routine and conventional in the field."
11 (App. Br. 25 (emphasis omitted) (quoting 2014 Interim Guidance on Patent
12 Subject Matter Eligibility, 79 Fed. Reg. 74618, 74624 (Dec. 16, 2014)).
13 That said, the Appellants do not identify which specific limitations, if any,
14 do not constitute what is well-understood, routine and conventional in the
15 field with sufficient specificity for us to review the Examiner's findings.
16 Instead, the Appellants assert that the "claimed subject matter improves
17 online education platforms by tapping into both automated computer-
18 implemented data analysis and the insights and observations of a mentor to
19 identify and recommend learning activities that are appropriate and offer the
20 right level of challenge for each individual learner." (App. Br. 26). As
21 discussed earlier, both data analysis, and the mental steps performed by a
22 mentor in providing insights and observations, are abstract ideas in and of
23 themselves. The Appellants have not provided a persuasive reason why the
24 steps of claim 13, separately or as a whole, recite an application of an
25 abstract idea rather than an abstract idea itself.
14
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1 The Examiner also correctly determines that claim 13, as a whole,
2 fails to recite a specific application of the abstract idea. (See Ans. 3--4).
3 Therefore, we conclude that the subject matter of representative claim 13 is
4 not eligible for patent protection.
5
6 DECISION
7 We sustain the rejection of claims 1-3, 5-9, 11-15, 17 and 18 under
8 35 U.S.C. § 101 as being directed to ineligible subject matter.
9 Therefore, we AFFIRM the Examiner's decision rejecting claims 1-3,
10 5-9, 11-15, 17 and 18.
11 No time period for taking any subsequent action in connection with
12 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
13 § 1.136(a)(l)(iv).
14
15 AFFIRMED
15