Ex Parte Gillam et al

Patent Trial and Appeal Board

May 2, 2018

13708519 (P.T.A.B. May. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/708,519 12/07/2012
137610 7590 05/04/2018
Sheppard Mullin Richter & Hampton LLP -
Oracle International Corporation
379 Lytton Ave.
Palo Alto, CA 94301
FIRST NAMED INVENTOR
Andrew R. Gillam
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.
48KK-230093 9954
EXAMINER
UTAMA, ROBERT J
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
05/04/2018 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):
svpatents@sheppardmullin.com
jraynova@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW R. GILLAM and WILLIAM GUY HILBERT 1
Appeal2017-003138
Application 13/708,519
Technology Center 3700
Before MICHELLE R. OSINSKI, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-22 under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. 2 We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
1 Oracle International Corporation ("Appellant") is the Applicant as
provided in 37 C.F.R. § 1.46 and is identified as the real party in interest.
Br. 2.
2 The specific rejection of claims 15-20 as directed to patent-ineligible
subject matter "because the limitation[s] are directed to [a] computer
program product that [is] not embodied in a non-transitory computer
readable medium" (Final Act. 3) has been withdrawn (Ans. 2).
Appeal 2017-003138
Application 13/708,519
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Claims 1, 10, and 15 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
l. A cornputer-implernented rnethod comprising:
accessing a set of values, wherein
each value of the set of values is on a raw scale that
is from a minimum value to a maximum value, and
the set of va1ues is stored in a non-transitory
computer-readable storage medium; and
generating, using one or more processors of a computer
system, a competency value, wherein
the generating the competency value comprises
generating a compressed value from a first value of the set
of values, wherein
the compressed value is generated by
mapping a first value of the set of values to an
adjusted sca1e, wherein the mapping the first value
comprises using one of a linear formula or a non-
linear fi.n·mula, and the adjusted scale has a smaller
ram::e than the raw scale. and
(.:.; ·'
generating an accelerator, wherein
the accelerator is generated using one or more
~ '--'
remaining values of the set of values, and
the one or more remaining values are values of the
set of values other than the first value, and
the compressed va1ue and the accelerator are used in the
generating the competency value.
OPINION
Appellant argues independent claims 1, 10, and 15 as a group and
does not present any separate arguments for dependent claims 11-14, 16-19,
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and 21. Br. 6-15. We select claim 1 as the representative claim, and claims
10-19 and 21 stand or fall therewith. 37 C.F.R. § 41.37(c)(l)(iv).
The Supreme Court has set forth "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 Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 71-73 (2012)).
Under that framework, it must be "determine[ d] whether the claims at issue
are directed to one of those patent-ineligible concepts"-i.e., a law of nature,
a natural phenomenon, or an abstract idea. Id. If so, "the elements of each
claim [must be considered] 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 Afayo,
566 U.S. at 78). The Supreme Court has described the second part of the
analysis 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. (quoting 1Hayo, 566 U.S. at 72-73) (alteration in
original).
The Examiner determines that the subject matter of claim 1 is
"directed to [a] method that calculate[s] [a] competency value, compressed
value[,] and acceleration value" and "relies heavily on the application of [a]
mathematical algorithm and function to perform its function." Ans. 3. The
Examiner states that "[ f]or example, the generation of the competency
values [is] nothing more than the product of mathematical calculation based
on the input received by the computer" (id. at 3--4 (citing Spec. i-fi-133-37)),
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"the compression curve and compression value are reduced along the
straight line of 1 - 4.5 (y=[0.90]x)" (id. at 4 (citing Spec. i-f 33)), and "a
mathematical algorithm of calculating accelerator values can be found in
paragraph 37" (id.). The Examiner takes the position that the limitations of
claim 1 "are similar to other cases [that] have been decided to be directed to
an abstract idea," including "[fJor example, an algorithm for converting
binary coded decimal to pure binary[3J and an algorithm or formula for
computing an alarm limit."4 Id. (citing July 2015 Update: Interim Eligibility
Guidance Quick Reference Sheet).
Appellant argues that the claimed invention is not directed to the idea
of evaluating an employee's competency because, for example, claim 1 does
not recite any steps that could be "characterized as directed to how the
competency value is used in an employee's evaluation or the manner in
which an employee evaluation is performed." Br. 6-7. This argument is not
persuasive of Examiner error because it fails to address the Examiner's
clarified identification of the abstract idea as a method that merely employs
mathematical algorithms to manipulate input data in order to generate other
data. See Ans. 3--4. We agree with the Examiner that, under the first step of
the analysis, claim 1 is directed to an abstract idea. See id. The claimed
steps amount to receiving input information (i.e., data on a raw scale) and
3 See Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972) (rejecting as
ineligible claims directed to an algorithm for converting binary-coded
decimal numerals into pure binary form).
4 See Parker v. Flook, 437 U.S. 584, 585, 594-96 (1978) (rejecting as
ineligible claims directed to (1) measuring the current value for a variable in
a catalytic conversion process, (2) using an algorithm to calculate an updated
"alarm-limit value" for that variable, and (3) updating the limit with the new
value).
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Application 13/708,519
generating additional information (i.e., a compressed value and accelerator,
and ultimately, a competency value) using algorithms. 5 Our reviewing
courts have held claims ineligible under § 101 when directed to
manipulating existing information, such as by using algorithms, to generate
additional information. In addition to those examples identified by the
Examiner in the Answer, see also Elec. Power Grp. LLC v. Alstom S.A., 830
F.3d 1350, 1353-54 (Fed. Cir. 2016) (discussing how "collecting
information" and "analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more" are abstract ideas);
and Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344,
13 51 (Fed. Cir. 2014) ("Without additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.").
Appellant further argues that the claims do "not preempt all
applications of the purported abstract idea of evaluating an employee's
competency" in that, for example, there "remain many alternative methods
of aiding in the assessment of an employee's competency ... [or] of
generating a competency value." Br. 14-15. This argument is unpersuasive.
l\1ere1y because claims do not preempt all forms of the abstraction does not
make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all
5 Although the claims recite the algorithms in words rather than as
mathematical formulas, the claim nevertheless recites algorithms. See In re
Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989) ("It is of no moment that the
algorithm is not expressed in terms of a mathematical formula. Words used
in a clairn operating on data to solve a problem can serve the same purpose
.!' 1 "' as a iormu a. ).
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price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract"). 1'1oreover,
characterizing preemption as a driving concen1 for patent eligibility is not
the same as characterizing preemption as the dispositive test for patent
eligibility. Instead, "[t]he Supreme Court has made clear that the principle
of preemption is the basis for the judicial exceptions to patentability" and
"[f]or this reason, questions on preemption are inherent in and resolved by
the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Id. Given
this direction from our reviewing court, we decline to apply a separate
preemption standard in our analysis, and instead, as discussed above, we
apply the steps set forth by the Supreme Court in Alice and 1Wayo.
Therefore, when read as a whole, independent claim 1 is directed to a
method employing mathematical algorithms for manipulating data, which,
for the above reasons, constitute a patent-ineligible abstract idea.
Regarding the second step of the Alice framework, the Examiner
determines:
[T]he claim limitations do not set forth any limitation that ...
amounts to significant[ly] more than the judicial exception itself.
The additional element( s) or combination of elements in the
claim(s)[,] other than the abstract idea per se[,] amount(s) to no
more than: mere instructions to implement the idea on a
computer, and/or recitation of generic computer structure, ex.,
physical, non-transitory devices, that serves to perform generic
computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent
industry. Viewed as a whole, these additional claim element( s)
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do not provide meaningful limitation(s) to transform the abstract
idea into a patent eligible application of the abstract idea such
that the claim(s) amounts to significantly more than the abstract
idea itself.
Final Act. 2-3.
Appellant argues that the limitations relating to generating a
competency value, generating a compressed value, and generating an
accelerator are "limitations that are more than merely generic computer
limitations." Br. 8. This argument is not persuasive in that Appellant points
only to the algorithm itself, whereas the second step of Alice is a search for
an element or combination of elements that ensures that the claim is more
than the ineligible concept of a mathematical algorithm.
Appellant also argues that its claims are similar to the claims of DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) in that
"the claimed invention recites an invention that is not merely the routine or
conventional technique for evaluating an employee's competency." Br. 9.
We do not find this argument persuasive. As an initial matter, the claims at
issue in DDR addressed the problem of retaining website visitors who would
otherwise be transported away from the host website after clicking on an
advertisement on the host website and activating a hyperlink. DDR, 773
F.3d at 1257. The DDR claims related to automatically generating a hybrid
web page that permits users visiting a host website to view and purchase
products from a third-party merchant, whose ads are displayed with
hyperlinks on the host website, without leaving the host website and entering
that merchant's website. The Federal Circuit found the claims to be directed
to patentable subject matter because they "specify how interactions with the
Internet are manipulated to yield a desired result-a result that overrides the
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routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink." Id. at 1258. The solution set forth in the DDR claims "is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." Id. at 1257. In
contrast, claim 1 does not purport to improve the functioning of a computer
system itself, nor does it effect an improvement in any other technology or
technical field. Even assuming that the claimed invention takes into
consideration both an employee's depth in a specific competency as well as
breath of knowledge in other competencies of interest as asserted by
Appellant (Br. 9), this is not a solution rooted in computer technology, but
rather is a business solution for ensuring "[a ]ccurate and reliable
assessments of competencies across the business entity ... [to] mitigate
attrition risks and enhance productivity" (Spec. i-f 4).
To the extent Appellant is arguing that the claimed algorithms are not
well understood, routine, or conventional activities known to the industry
(Br. 9-10), the fact that the algorithms themselves are not well understood or
routine in the industry does not rebut the Examiner's finding that having a
generic computer receive certain values and calculate certain other values
using algorithms is a well understood, routine, and conventional function for
a generic computer to perform. The novelty or non-obviousness of the
algorithm does not automatically lead to the conclusion that the claimed
subject matter is patent-eligible. Although the second step in the Mayo/Alice
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
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[ineligible concept] itself."' Alice Corp., 134 S. Ct. at 2355.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89
( 1981) ("The 'novelty' of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter."); Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016) ("[U]nder the Mayol Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (citing Mayo, 566 U.S. at 90) (a finding that the
claims are novel and nonobvious in light of an absence of evidence does not
conflict with the Examiner's conclusion under 35 U.S.C. § 101 because "a
claim for a new abstract idea is still an abstract idea"). However useful the
calculations obtained may be, their value or usefulness is not dispositive of
patent eligibility. Parker, 437 U.S. at 594----96 (deten11ining claims to "a new
and presumably better method for calculating alarm limit values," which
were of undisputed usefulness, to be directed to patent-ineligible subject
matter). Appellant has not persuaded us that the claims are directed to more
than an abstract idea (e.g., a mathematical algorithm for manipulating data)
for which generic computer technology is merely invoked as a conventional
tool.
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Appellant argues that dependent claims 2-9, 20, and 22 recite "further
limitations that are not merely routine or conventional." Br. 10-14. Each of
these dependent claims merely recites additional details regarding the
mathematical algorithms (e.g., "multiplying the compressed value by the
accelerator" for dependent claim 2). As described in more detail above, the
novelty or non-obviousness of the algorithm does not automatically lead to
the conclusion that the claimed subject matter is patent-eligible. See also
Ans. 9-10 ("[W]hile the steps of the calculation might be novel (due to the
lack of prior art); the limitation itself only involve[ s] a mathematical
operation."). We agree with the Examiner that the additional limitations
recited in the dependent claims do not amount to significantly more than the
abstract idea discussed above with respect to independent claim 1. See id.
That is, the dependent claims amount to nothing more than further details
regarding the mathematical algorithms or calculations employed, rather than
something more than the ineligible concept of a mathematical algorithm.
For the foregoing reasons, we find nothing in independent claim 1 or
dependent claims 2-9, 20, and 22 to be sufficiently transformative to render
the claims patent eligible, and claims 10-19 and 21 fall with independent
claim 1. We sustain the Examiner's rejection of claims 1-22 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
DECISION
The Examiner's decision to reject claims 1-22 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter is affirmed.
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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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