Ex Parte Dohring et al

Patent Trial and Appeal Board

Sep 21, 2018

13828671 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/828,671 03/14/2013
21971 7590 09/25/2018
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
UNITED ST A TES OF AMERICA
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.
40288-713.201 1053
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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 2017-011620
Application 13/828,671
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
1 Appellants identify the following applications as related appeals:
Application No. 12/946,538, filed Nov. 15, 2010 (abandoned); Application
No. 12/946,627, filed Nov. 15, 2010 (Appeal No. 2016-003423, Decision
rendered July 16, 2018 (affirmed)); Application No. 14/704,877, filed May
5, 2015 (abandoned); and Application Serial No. 13/827,566, filed Mar. 14,
2013 (Appeal No. 2017-005532, Decision rendered July 24, 2018
(affirmed)). See Appeal Br. 4.
Appeal 2017-011620
Application 13/828,671
Doug Dohring et al. (Appellants)2 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-3, 5-11, 13-16, and 18-23.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 11, and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer-based educational system for a child aged
about 1 to about 10 years, the system comprising:
a. a digital processing device comprising a memory
and an operating system configured to perform executable
instructions;
b. visual and audio content provided to the digital
processing device, and at least partially stored in the memory of
the digital processing device, that creates an immersive and
interactive educational environment for the child, wherein the
educational environment is further characterized by comprising:
i. at least three subjects, wherein each subject
comprises a plurality of levels of learning;
ii. a plurality of learning activities associated
with each subject; wherein the plurality of learning
activities teaches toward one or more educational
objectives in a subject; wherein the plurality of activities
consists essentially of activities teaching toward one or
more educational objectives in a subject;
111. a software module for creating an avatar to
represent the child;
iv. a software module for monitoring the
progress of the child in each of the plurality of learning
2 Age of Leaming, Inc. is the identified real party in interest. Appeal Br. 3.
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activities associated with each level of learning in each of
the subjects, wherein the software module for monitoring
the progress of the child displays an explorable
environment comprising a learning path for each level of
learning, each learning path comprising a sequence of
lessons, each lesson comprising a sequence of learning
activities depicted as stops along the learning path, the
avatar representing the child moving along the stops on the
learning path in the explorable environment, and
interactive elements configured to teach facts associated
with the environment, wherein each said interactive
element is a graphic representation of an environmental
element associated with the facts, wherein said interactive
elements are available for interaction in between learning
activities, wherein the explorable environment provides
one or more quizzes covering the facts associated with the
environment, wherein completion of the sequence of
learning activities depicted as stops along the learning path
allows the avatar to move to a new explorable environment
comprising a new learning path; and
v. a software module for creating virtual
economy through rewarding children virtual units based
on the completion of activities of different levels and
allowing children to exchange virtual units; provided that
the subjects and the activities are suitable for the child with
regard to educational objective, content, interface, and
difficulty.
Appeal Br. 32-33 (Claims App.).
REJECTI0N3
Claims 1-3, 5-11, 13-16, and 18-23 are rejected under 35 U.S.C.
§ 101, as being directed to patent-ineligible subject matter.
3 In the Final Office Action, claims 1, 11, and 16 are objected to for
informalities. See Final Act. 2; see also Appeal Br. 13; Ans. 5. However,
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Application 13/828,671
ANALYSIS
Appellants argue claims 1-3, 5-11, 13-16, and 18-23 as a group. See
Appeal Br. 12, n. 1. We select claim 1 as representative of the group; claims
2, 3, 5-11, 13-16, and 18-23 stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner determines that claim 1 is directed to patent-ineligible
subject matter based on a judicial exception without adding significantly
more to the judicial exception. Ans. 2--4. More specifically, the Examiner
determines that
[ claim 1 is] directed to a method for educating a child,
comprising: creating an immersive environment comprising: at
least three subjects, wherein each subject comprises a plurality
of levels of learning, and a plurality of learning activities
associated with each subject; wherein the plurality of learning
activities teaches toward one or more educational objectives;
providing interactive elements configured to teach facts,
graphical representations of an environmental element
associated with the facts, and quizzes covering the facts;
monitoring the progress of the child in each of the learning
activities by providing a graphical representation of a learning
path comprising a sequence of lessons; and creating a virtual
economy through rewarding of virtual unit based on completion
of activities.
Id. at 2. The Examiner explains: (1) "[i]n Int. Ventures v. Cap One Bank,
'382 patent, the court held that the concept of 'tailoring content based on
information about a user' in an electronic content delivery environment is
the objections are not within the jurisdiction of the Board. See 37 C.F.R.
§ 1.181.
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Application 13/828,671
directed to an abstract idea"; 4 (2) "the instant concept of providing an
immersive environment with subjects, learning activities, interactive
elements, facts and quizzes teaching toward one or more educational
objectives associated with a level of learning of a child is also directed to an
abstract idea;" (3) "[r ]egarding the feature of monitoring progress and
providing a graphical representation of a learning path representative of the
progress of a user, this concept is akin to the judicially-invalidated concept
of []collecting information (progress of a user), analyzing it (determining
user's progress), and displaying certain results of the collection and analysis
(displaying the learning path representing the user's progress);" and (4)
"[ r ]egarding the feature of creating a virtual economy through rewarding of
virtual units based on completion of activities, this represents a 'fundamental
economic practice', which the courts have held to be directed to abstract
ideas, for example in Smith ('rules for conducting a wagering game') and
BuySAFE ('creating a contractual relationship['])." 5 Id. at 2-3. 6
The Examiner determines that claim 1 does not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because
4 See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363
(Fed. Cir. 2015).
5 See In re Smith, 815 F.3d 816 (Fed. Cir. 2016); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350 (Fed. Cir. 2014).
6 The rejection in the Final Office Action relies on Affinity Labs v.
Amazon.com, 838 F.3d 1266 (Fed. Cir. 2016) and Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709 (Fed. Cir. 2014). See Final Act. 2-3. However, the
rejection in the Answer does not rely on these decisions. See Ans. 7 ("[T]he
instant rejection in view of the April 2017 Guidance for Identifying Abstract
ideas does not rely on these examples").
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the additional elements or combination of elements in the claims
other than the abstract idea per se amount to no more than:
requiring no more than a generic computer to perform generic
computer functions that are well-understood, routine and
conventional activities previously known to the industry. For
example, claim 1 recites a computer-based educational system
for performing the method, the system comprising a digital
processing device with a memory and operating system
configured to present the audio and visual content of the
immersive environment. The claim further recites software
modules for monitoring progress and creating the virtual
economy. These limitations represent a generic computer
(processing device, memory, operating system, modules)
performing generic computer functions ( audio/visual
presentation) that are well understood, routine and conventional
activities previously known to the industry. Regarding the
limitation of a software module for creating an avatar to represent
the child, the avatar moving along the stops on the learning path
and explorable environments comprising a new learning path, the
concept of displaying an avatar representing a user on a path in
an explorable environment represents well-known generic
computer activity; for example, many first-person and third-
person video games show a player's character moving through a
virtual environment. These video games are ubiquitous and well
known to those of even basic skill in the art, and therefore these
additional limitations relating to an avatar representing the child
represent well-understood, routine and conventional activities
previously known to the industry.
Id. at 3--4. The Examiner concludes, "[ v ]iewed as a whole, these additional
claim elements do not provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract idea such that
the claims amount to significantly more than the abstract idea itself." Id. at
4.
Appellants contend that the Examiner improperly introduces a new
ground of rejection in the Answer by no longer relying on Affinity Labs and
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Ultramercial, but instead relying on newly-cited case law. See Reply Br. 5-
6. However, this issue is a petitionable matter that is not within the
jurisdiction of the Board. See 37 C.F.R. §§ 4I.3l(c), 1.181; MPEP
§ 1207.03(b).
Appellants note that the proper inquiry is to determine whether the
claims are directed to a patent-ineligible concept. Appeal Br. 14; Reply Br.
7-9. According to Appellants, the Examiner fails to precisely state what
abstract idea the claims are directed to. Reply Br. 7-8.
The Supreme Court has provided "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp., Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1296-1297
(2012)). According to this framework, we must first determine whether the
claims are directed to one of those concepts (i.e., laws of nature, natural
phenomena, and abstract ideas). Id. If so, we must secondly "consider the
elements of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo, 132 S.Ct. at
1298, 1297). The second step of the analysis is characterized as "a search
for an 'inventive concept' - i.e., an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id.
(alteration in the original) (quoting Mayo, 132 S.Ct. at 1294).
Appellants argue that claim 1 is not directed to an abstract idea
because the claim is directed to specific and particular technological tools
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that address a challenge unique to an online learning environment for
children. Appeal Br. 15; see also Reply Br. 18-19. Appellants contend that
the specific and particular tools for the online learning environment for
children come in the form of the ordered combination of many features and
functionalities as recited in the claims and reiterated on pages 16-17 of the
Appeal Brief. See Appeal Br. 16-17. Appellants argue that the Examiner
does not look at claim 1 as a whole by referring to the step of providing
audio and visual content to a user on a digital processing device, or the step
of monitoring progress of the user and adjusting presentation content and
rewarding virtual units based on completion of learning activities. Id. at 17.
As such, Appellants contend the Examiner overlooked the key concepts and
specific technological tools. Id. at 18.
These arguments are unpersuasive. As the Examiner explains, "[t]he
instant rejection [] relegates the feature of an avatar representing the child
and moving along a learning path to Step 2B of the Alice Test as an
additional limitation." Ans. 6. In other words, many of the features listed
on pages 16-17 of the Appeal Brief are considered additional elements for
the determination that claim 1 is insufficient to amount to significantly more
than the judicial exception. Further, claim 1 is not "directed to specific and
particular technological tools" merely because it recites many features.
Although Appellants contend that online learning has a unique difficulty in
that there is no physical presence of an instructor or classmates (Appeal Br.
22), that difficulty can likewise exist in a "brick and mortar" environment,
such as when a child is learning on her own.
Moreover, claim 1 is directed to a system that utilizes software
modules for a variety of tasks. Appeal Br. 32-33 (Claims App.). As such,
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claim 1 is directed to a set of rules performed by a computer (i.e., a
mathematical algorithm or a software). "Software can make non-abstract
improvements to computer technology just as hardware improvements can,
and sometimes the improvements can be accomplished through either
route." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016). Accordingly, we must determine if "the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea, even at the first step of the Alice analysis." Id. Here, the limitations at
issue are not directed to an improvement in computer functionality. There is
nothing recited in claim 1 that indicates, once the software modules
implement the tasks, the function of the system will be improved. Instead,
similar to the claims in Electric Power Group, claim 1 is a purported
advance in uses for existing computer capabilities, not new or improved
computer capabilities. See Electric Power Group, LLC v. Alstom S.A, 830
F.3d 1350, 1354 (Fed. Cir. 2016); see also id. at 1353-1354 (explaining that
an invention directed to the collection, manipulation, and display of data is
an abstract process). Electric Power Group is applicable for data merely
generated from a learner's progress of activities. We thus are unpersuaded
that claim 1 is directed to specific and particular technological tools that
address a challenge unique to an online learning environment for children.
Appeal Br. 15.
Appellants also contend that claim 1 is similar to the claims in DDR
Holdings,7 which the court determined to not be directed to an abstract idea.
Appeal Br. 19; see also Reply Br. 14--16. Appellants argue that their claims
7 See DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014).
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and those addressed in DDR Holdings do not recite a mathematical
algorithm, a fundamental economic practice, or a long standing commercial
practice, but instead, address "challenges particular" to teaching children in
an e-learning environment that do not appear when teaching children in a
"brick and mortar" classroom. Appeal Br. 20; see also id. at 12 (arguing that
the claimed subject matter concerns a problem unique to online learning that
never existed in a physical classroom).
We disagree that Appellants' claims are similar to those in DDR
Holdings. The Examiner explains that in DDR Holdings, the court found
that the claims solve a problem arising from the technological area of
delivering web pages. Ans. 7. In other words, DDR Holdings is more
specific to solutions that are rooted in computer technologies. We agree
with the Examiner that claim 1, in contrast, is directed to a problem in
teaching children, which problem existed in the pre-computer world rather
than arising from any particular technological area. Id.; see also id. at 5
(explaining that Appellants' invention merely utilizes the well-known
technology of an avatar representing a child to perform abstract concepts of
providing tailored education to a user, analyzing information representing a
user's interaction and determining and displaying the progress, and creating
a virtual economy). In other words, we find that creating an immersive and
interactive computer-based educational environment is not a specific
technological solution as found in DDR Holdings.
We recognize Appellants' argument against the Examiner's
comparison of claim 1 with the claims of Intellectual Ventures. Reply Br.
14. We are unpersuaded by Appellants' statement that the Examiner never
analyzes claim 1 as a whole, as required by Intellectual Ventures. Id.; see
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also Ans. 2--4. We are also unpersuaded by Appellants' contention that
claim 1 cannot be compared to the claims of Intellectual Ventures because
the latter claims require "navigational data." Reply Br. 14. The fact that
Intellectual Ventures' claims require "navigational data," which is not
required in claim 1, does not negate a determination that claim 1 is also
directed to an abstract idea in the first step of the Alice-Mayo analysis.
Thus, in accordance with the first step of the Alice framework, the
Examiner correctly finds that claim 1 is directed to an abstract idea.
Appellants next argue that the Examiner fails to examine the claim
elements for an inventive step. Appeal Br. 25. According to Appellants,
their claims are similar to those in Bascom, 8 because their claims recite a
"specific, discrete implementation" of delivering media content with an
ordered combination of limitations as reiterated on pages 26-27 of the
Appeal Brief. Id. at 25-28; see also Reply Br. 17-19.
Claims must include additional features that are significantly beyond
"well-understood, routine, conventional activity" or a simple "instruction to
implement or apply the abstract idea on a computer." See Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d at 715 (quoting Mayo, 132 S.Ct. at 1298); Bascom,
827 F.3d at 1349 (quoting Alice, 134 S. Ct. at 2358). As the Examiner
explains, the court in Bascom found that the claimed invention included an
unconventional feature of installing a filtering tool at a specific location
remote from the end-users, with customizable filtering features specific to
each user. Ans. 7. The Examiner further explains that the court focused on
8 See Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1352 (Fed. Cir. 2016).
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the claimed combination of technical features, whereas claim 1 includes no
such ordered combination of technical features sufficient to amount to
significantly more than the abstract idea, but merely recites providing a
particular type of well-known audio/visual content to a user in an immersive
learning environment. Id. at 7-8. Although claim 1 sets forth features as
reiterated on pages 26-27 of the Appeal Brief, the limitations of claim 1 do
not transform the abstract idea embodied in the claim. Rather, the
limitations simply implement the idea.
To the extent Appellants are arguing that the claims do not preempt
because they are limited to the field of immersive online environment for
children (Appeal Br. 13-14, 20; Reply Br. 9-13), this argument is
unpersuasive. In Electric Power Group, the court noted that a field-of-use
restriction, "limiting the claims to the particular technological environment
of power-grid monitoring," is insufficient. Electric Power Group, 830 F.3d
at 1354. Further, "[ w ]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed Cir. 2015). In Appellants' contention regarding preemption,
Appellants cite to OIP v. Tech. v. Amazon.com, 788 F.3d 1359 (Fed. Cir.
2015), Sequenom, Inc., Bascom, McR0, 9 Ultramercial, among others.
Reply Br. 10-13. We disagree with Appellants that claim 1 has no
preemptive effect, that is, it does not foreclose basic tools of teaching. See
also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d at 1362-1363 ("And
9 McRO, Inc. v. Bandai Nameco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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that the claims do not preempt all price optimization or may be limited to
price optimization in the e-commerce setting do not make them any less
abstract.").
Accordingly, claim 1, when considered "both individually and 'as an
ordered combination,"' amounts to nothing more than an attempt to patent
the abstract idea embodied in the steps of the claim. See Alice, 134 S. Ct. at
2355 (quoting Mayo, 132 S.Ct. at 1298, 1297). Thus, the limitations of
claim 1 fail to transform the nature of the claim into patent-eligible subject
matter. See id. ( citing Mayo, 132 S.Ct. at 1298, 1297); see also Ans. 7-8.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 2, 3, 5-11, 13-16, and 18-23 which fall therewith, as being
directed to patent ineligible subject matter.
DECISION
We affirm the rejection of claims 1-3, 5-11, 13-16, and 18-23.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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