Ex Parte DUTTA et al

Patent Trials and Appeals Board

May 10, 2019

12815799 - (D) (P.T.A.B. May. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/815,799 06/15/2010
74739 7590 05/14/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
Debasis DUTTA
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.
2011-023 lUSO 1 2098
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
05/14/2019 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBASIS DUTT A, BRIAN GASP AR,
JULIAN CHALLENGER, and DINESH ARORA
Appeal2017-010745
Application 12/815,799 1
Technology Center 3600
Before JASON V. MORGAN, IRVINE. BRANCH, and
MICHAEL M. BARRY, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 3, 5-7, 9, 11, 14, 16, and 19-23. Claims 2, 4, 8, 10,
12, 13, 15, 17, and 18 are canceled. Appeal Br. 22-25. This appeal is
related to appeal number 2017-009329 (Application No. 12/814,756),
decided December 28, 2018, request for hearing denied April 10, 2019. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Oracle International Corporation as the real party in
interest. Appeal Br. 2.
Appeal2017-010745
Application 12/815,799
Summary of disclosure
Appellants disclose "applying a data mining tool to ... attributes
[ associated with a worker] and [a] proposed personnel action to identify [ or
predict] an impact of the proposed personnel action." Abstract.
Exemplary claims (key limitations emphasized)
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to graphically display an impact of a
proposed personnel action, the graphically displaying
compnsmg:
collecting a plurality of attributes associated with each of
a plurality of workers;
receiving the proposed personnel action directed at an
individual worker within the plurality of workers;
applying a data mining tool to the attributes and the
proposed personnel action to predict the impact of the proposed
personnel action on a predicted attrition and a predicted
performance of the individual worker; and
outputting the impact of the proposed personnel action
based on the result produced by the data mining tool, wherein
the outputting comprises graphically representing the individual
worker on an XY chart based on the predicted attrition and the
predicted performance of the individual worker, wherein the
XY chart has a first axis and a second axis, and the second axis
shows the predicted attrition and the first axis shows the
predicted performance.
5. The computer-readable medium according to claim 1,
wherein the predicted performance of the individual worker is
predicted using a first data mining tool and the predicted
attrition of the individual worker is predicted using a second
data mining tool different than the first data mining tool.
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Rejections
The Examiner rejects claims 5 and 20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 5---6; Ans. 2.
The Examiner rejects claims 1, 3, 5-7, 9, 11, 14, 16, and 19-23 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 6-10.
35 U.S.C. § 112, FIRST PARAGRAPH
In rejecting claim 5 as failing to comply with the written description
requirement, the Examiner finds that "[ w ]hile the specification supports
embodiments using two different tools, one for regression and one for
classification, it does not specifically support that they must be different
tools." Final Act. 5---6. Appellants argue "the Specification's support for
using different tools of regression and classification for predicting a
respective one of performance and attrition does provide sufficient support
for the claimed feature of 'using a second data mining tool different than the
first data mining tool."' Appeal Br. 4 ( emphasis added). The Examiner
alternatively posits that "[ n ]owhere is there any description that each
technique is effectuated by a different 'tool' ... there are different
algorithms, [ and] ... techniques described, but there are no delineations as
to what comprises a tool nor any description of the correspondence between
the notion of a tool and a technique." Ans. 3.
The Examiner's findings are insufficient to demonstrate Appellants
did not possess the invention of claim 5 at the time the application as filed.
The Specification describes the use of data mining as a tool, with two
commonly used data mining techniques (i.e., two data mining tools) being
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classification and regression. Spec. ,r 41. The Specification discloses
predicting the risk of leaving using classification and predicting the future
performance of an employee using regression. Id. ,r,r 43, 49. The
Specification further discloses using "data mining tools," plural, "to analyze
employee attributes .... to predict whether a specific employee is likely to
leave as well as their likely future performance." Id. ,r 72.
These disclosures show that Appellants' claimed use of first and
second different data mining tools refers to the use of different data mining
techniques. That is, Appellants use the term tool to refer to a technique,
regardless how the technique is implemented. See also Spec. ,r,r 3, 30, 35,
37, 74 (describing the flexibility, in terms of hardware and software, of
embodiments implementing the disclosed invention).
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 112, first
paragraph, rejection of claim 5, and claim 20, which is similarly rejected.
See Ans. 2.
Although the Examiner's 35 U.S.C. § 112, first paragraph, rejection of
claim 5 is unsustainable, the disputed claim recitation does not make sense
as a consequence of claim 5 depending from claim 1. Specifically,
dependent claim 5 details the use of a first data mining tool and a second
(different) data mining tool to predict performance and attrition respectively.
Independent claim 1, however, recites "applying a data mining tool"
( emphasis added) to predict both attrition and performance.
It is unclear, for example, whether the data mining tool of claim 1
comprises the first and second data mining tools of claim 5, whether
Appellants intended to claim applying at least one data mining tool in claim
1, or whether Appellants sought to claim (perhaps with inadequate support)
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applying three data mining tools (the data mining tool of claim 1, and the
first and second data mining tools of claim 5). Dependent claim 20 has the
same issue as a consequence of its dependency from claim 14.
In the event of further prosecution, it is incumbent on Appellants and
the Examiner to resolve this issue with claims 5 and 20.
35 U.S.C. § 101
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in§ 101, including: (1) laws of nature; (2) natural phenomena; and (3)
abstract ideas. Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions "from those that claim patent-
eligible applications of those concepts." Id. at 217 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
evaluation follows a two-part analysis: (1) determine whether the claim is
directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See id. at 217-18.
"[ A ]11 inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. We "'must be careful to avoid oversimplifying the claims' by looking
at them generally and failing to account for the specific requirements of the
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claims." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016) (quoting TL! Commc'ns LLC Patent Litig., 823 F.3d
607, 611 (Fed. Cir. 2016)). We, therefore, look to whether: (1) the claims
focus on a specific means or method that improves the relevant technology
or (2) the claims are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
That is, we look to whether the claims are "specifically designed to achieve
an improved technological result in conventional industry practice." McRO,
837 F.3d at 1316 (emphasis added) (citing Alice, 573 U.S. at 222-24).
Although the second step in the Alice/Mayo framework is termed a
search for an "inventive concept," the analysis is not an evaluation of
novelty or non-obviousness, but rather a search for "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."' Alice, 573 U.S. at 217-18 ( citation omitted). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Ass 'n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)
("Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry").
If a claim proves to be unpatentable as a result of the two-part
analysis, no additional determination regarding preemption is necessary.
"While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility," as
"questions on preemption are inherent in and resolved by the § 101
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analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (internal quotation marks and citation omitted).
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. US PTO
Memorandum of January 7, 2019, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (see id. at 54 (step 2A-prong one)); and
(2) additional elements that integrate the judicial exception into a
practical application (see id. at 54--55 (step 2A-prong two); 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, do we 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.
See Memorandum, 84 Fed. Reg. at 56 (step 2B).
Memorandum step 2A - prong one
In rejecting claim 1 as being directed to non-statutory subject matter,
the Examiner determines claim 1 is directed to "graphically displaying the
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impact of a proposed personnel action as to the risk of employee attrition
and performance and therefore [is] specifically directed to a species of
fundamental economic practices, and certain methods of organizing,
assessing and predicting human activities." Final Act. 7. Appellants
contend the Examiner erred "by abstracting and generalizing the claimed
limitations at such a high level that the alleged abstract idea no longer has
ANY relationship to the actual recited limitations." Appeal Br. 8; see also
Reply Br. 2.
Claim 1 recites "applying a data mining tool" to attributes of a work
and a proposed personnel action "to predict the impact of the proposed
personnel action on a predicted attrition and a predicted performance of the
individual worker." The idea of predicting how a personnel action may
affect worker performance and attrition represents a form of risk
management-an attempt to ensure that the action being considered will
likely lead to the desired outcome ( e.g., improved performance with a low
likelihood of attrition). Moreover, using "a data mining tool" is an ordinary
business concept representing extrapolating from the past (i.e., existing data)
into the possible future (i.e., a prediction). The Specification even
acknowledges that "[ o ]rganizations utilize human resource management
processes to attract appropriately skilled employees, integrate them into the
organization, assess and develop their competencies, and retain their
commitment." Spec. ,r 2.
Accordingly, like methods of hedging against price fluctuation risk or
mitigating settlement risk, the claimed invention is directed to a certain
method of organizing human activity (i.e., a fundamental economic practice)
that represents an abstract idea. See Alice, 573 U.S. at 219-21.
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Memorandum step 2A - prong two
To evaluate a claim under step 2A, prong two, we: "(a) [i]dentify[]
whether there are any additional elements recited in the claim beyond the
judicial exception(s ); and (b) evaluat[ e] those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application." Memorandum, 84 Fed. Reg. 54--55.
Additional elements that merely add insignificant extra-solution activity to
an abstract idea fail to integrate the abstract idea into a patent-eligible
practical application. See id. at 55.
In addition to having recitations directed to the idea of predicting how
a personnel action may affect worker performance and attrition represents a
form of risk management, claim 1 includes recitations directed to collecting
a plurality of attributes, receiving the proposed personnel action, and
outputting the predicted impact of the proposed personnel action. These
additional recitations merely represent generic data gathering steps that fail
to confer patentability or data output techniques that can be performed by a
human using pen and paper. See, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (citing In re Grams,
888 F.2d 835, 839--40 (Fed. Cir. 1989)); see also Ex parte Dutta, Appeal
No. 2017-009329, slip op. at 8-9 (PTAB Dec. 28, 2018) (presentation of
data on an XY chart, "a basic visualization of two-dimensional data points
that has its origins in the first half of the nineteenth century," did not make
claim to abstract idea patent-eligible).
Appellants submit the outputting recitation "provides additional
functionality beyond the content of the data. Specifically, the recited charts
help managers easily identify those employees or teams that are predicted
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high performers and are also predicted to be at a high risk of loss." Reply
Br. 3. Thus, Appellants argue claim 1 recites functionality similar to that
found in the patent-eligible technology of Trading Techs. Int 'l, Inc. v. CQG,
Inc., 675 F. App'x 1001 (Fed. Cir. 2017) ("Trading Techs. I''). Reply Br. 3.
That is, Appellants argue claim 1 is similar to a claim directed to solving
"problems with prior graphical user interfaces used in the computerized
trading area, specifically improving speed, accuracy and usability." Id.
Appellants' arguments are unpersuasive because the challenged
patents in Trading Technologies did "not simply claim displaying
information on a graphical user interface," (Trading Techs. I, 675 F. App'x
at 1004) as is the case here. Rather, the claims in Trading Technologies I
required "a specific, structured graphical user interface paired with a
prescribed functionality directly related to the graphical user interface's
structure that [was] addressed to and resolve[ d] a specifically identified
problem in the prior state of the art." Id. Specifically, the Trading
Technologies I invention addressed the "problems that arise when a trader
attempts to enter an order at a particular price, but misses the price because
the market moved before the order was entered and executed" (id. at 1002)
by dynamically displaying a plurality of bid and ask prices in the market
along a static display of prices corresponding to a plurality of bids and asks,
where "the system pairs orders with the static display of prices and prevents
order entry at a changed price" (id. at 1003). Appellants do not identify any
comparable structure in the recitations of claim 1.
Furthermore, the Federal Circuit recently held that making a trader
faster and more efficient, rather than improving a computer, "is not a
technical solution to a technical problem." Trading Techs. Int'! v. !BG LLC,
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Case No. 17-2257, slip op. at 9 (Fed. Cir. Apr. 18, 2019) ("Trading Techs.
II"); see also Trading Techs. Int 'l v. !BG LLC, Case No. 17-2323, slip op. at
13 (Fed. Cir. Apr. 3 0, 2019). Because the claims did "not improve the
functioning of the computer, make it operate more efficiently, or solve any
technological problem," "the claims [were] directed to the abstract idea of
graphing bids and offers to assist a trader to make an order." Trading Techs.
II, Case No 17-2257, slip op. at 15.
The Federal Circuit further emphasized that arguments based on non-
binding, non-precedential decisions holding other patents patent-eligible are
unpersuasive, particularly when such decisions address "different patents,
different specifications, or different claims." Id. at 19.
Appellants' argument that the claimed "charts help managers easily
identify those employees or teams that are predicted high performance and
are also predicted to be at a high risk of loss" (Appeal Br. 13) (emphasis
added) illustrates that the precedential holding in Trading Technologies II is
more applicable here than the non-precedential holding in Trading
Technologies I. Specifically, rather than improve the functioning of a
computer, the claimed invention improves the capability of a manager.
Therefore, the claimed invention, like an invention directed to improving the
speed and efficiency of a trader, is not directed to a technical solution to a
technical problem (i.e., to a patent-eligible practical application). Trading
Techs. II, Case No. 17-2257, slip op. at 9.
Furthermore, despite Appellants' arguments (Appeal Br. 11 ), we
cannot identify how the additional recitations, even in combination, integrate
the claimed abstract idea into a practical application. In particular, claim 1
fails to recite limited rules structured to reflect a specific implementation that
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differs from what a data analyst engaged in predicting the impact of a
proposed personnel action on employee performance and attrition would
likely have used. See McRO, 837 F.3d at 1316.
Accordingly, we determine claim 1 fails to integrate the underlying
abstract idea into a patent-eligible practical application.
Memorandum step 2B
Appellants argue
the present specification discloses that the computer provides a
graphical representation including an XY chart where a worker
placed in the right, bottom square on the XY chart would have
high predicted performance and low likelihood of attrition; while
a worker in the center square of the XY chart would have
medium predicted performance and a medium likelihood of
attrition. Accordingly, such an XY chart helps managers easily
identify those employees or teams that are predicted high
performers and are also predicted to be at a high risk of loss.
Specification at ,r [0058]. Thus, in comparison to the prior art,
the claimed functionality leads to better results by providing an
improvement in the functioning of the computer.
Appeal Br. 18.
Contrary to Appellants' argument, the claimed invention does not
improve the computer itself. Instead, the claimed invention merely uses a
computer as a tool for implementing the abstract idea. That is, as noted
above, the claimed data gather and data output techniques can be performed
by a human using pen and paper. "[M]ere automation of manual processes
using generic computers does not constitute a patentable improvement in
computer technology." Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017). Moreover, the Specification generically
describes a number of computer technologies that could perform the
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claimed data mining without detailing how such computer technologies are
improved. See, e.g., Spec. ,r,r 27 ("Processor 22 may be any type of general
or specific purpose processor"), 37 ("functionality may be performed by
hardware ... or any combination of hardware and software"), 73-77,
Fig. 1. Therefore, the Specification illustrates that the additional recitations
merely append well-understood, routine, and conventional technologies to
the underlying abstract idea. See Memorandum, 84 Fed. Reg. at 56.
Furthermore, contrary to Appellants' arguments that the claimed
solution cannot be performed "using routine computer data storage and
mathematical operations" (Appeal Br. 16), the Specification describes both
the storage and mathematics at issue as well-understood, routine, and
conventional technologies and techniques. For example, the Specification
discloses that "[ c ]omputer readable media may be any available media that
can be accessed by processor 22 and includes both volatile and nonvolatile
media, removable and non-removable media, and communication media."
Spec. ,r 28. The Specification also discloses multiple classification and
regression techniques ("commonly used data mining techniques"), denoting
some simply by name. See, e.g., id. ,r,r 41 ("classification algorithms include
Naive Bayes, Decision Tree, ... "), 42 ("regression algorithms include
Multiple Regression ... ").
Appellants further posit that the Examiner erroneously failed to
determine "that the pending claims at least recite a 'non-conventional and
non-generic arrangement of known, conventional pieces', meaning all of the
pending claims recite an inventive concept per" BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Appeal
Br. 12; see also id. at 19-20. Nonetheless, Appellants do not, and we
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cannot, identify any such "non-conventional and non-generic" arrangement
embodied in the additional recitations of claim 1.
Appellants contend that the Examiner would have identified a non-
conventional, non-generic arrangement of additional recitations if the
Examiner had undertaken "a proper analysis" by considering "the claim
elements in combination." Id. The Examiner, however, plainly considers
the claim elements in combination, as evidenced, for example, by the
Examiner's finding that "determining correlations as in a scatter plot based
on statistical analysis necessarily requires ... some collecting and/or
receiving steps." Final Act. 9; see also Ans. 9-10.
Furthermore, Appellants' argument that the Examiner fails "to
consider the innovative combined use of data mining tools to predict [the]
likelihood of attrition and performance and graphical[ly] represent both of
them on the recited XY chart" (Appeal Br. 19-20) unpersuasively relies on
recitations central to the underlying abstract idea and to insignificant post-
solution activity rather than to additional recitations that add significantly
more to the underlying abstract idea.
For these reasons, we agree with the Examiner that claim 1 does not
have additional limitations that, even when considered as an ordered
combination, are sufficient to transform the underlying abstract idea into
patent-eligible subject matter. Final Act. 8-1 O; see also Memorandum, 84
Fed. Reg. at 56.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claim 1, and claims 3, 5-7, 9, 11, 14, 16, and 19-23, which Appellants do
not argue separately with respect to this rejection.
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DECISION
We reverse the Examiner's decision rejecting claims 5 and 20 under
35 U.S.C. § 112, first paragraph.
We affirm the Examiner's decision rejecting claims 1, 3, 5-7, 9, 11,
14, 16, and 19-23 under 35 U.S.C. § 101.
Because we affirm at least one rejection of each claim, we affirm the
Examiner's decision rejecting claims 1, 3, 5-7, 9, 11, 14, 16, and 19-23.
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.
§ 4I.50(f).
AFFIRMED
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