Ex Parte Gray et al

Patent Trials and Appeals Board

May 23, 2019

12165648 - (D) (P.T.A.B. May. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/165,648 06/30/2008
25096 7590 05/28/2019
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
FIRST NAMED INVENTOR
Lou Gray
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.
086882-8004.USOO 2220
EXAMINER
THAI, XUAN MARIAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
05/28/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOU GRAY, NIGEL J. GREEN, DANIEL R. KERNS,
ROY LEBAN, BECCA LEWIS, BENJAMIN W. SLIVKA, and
MICKELLE WEARY
Appeal2017-009183
Application 12/165,648 1
Technology Center 3700
Before CYNTHIA L. MURPHY, KENNETH G. SCHOPPER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 5-10, 22-26, 28, 29, 31-34, and 36. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appellants identify DreamBox Leaming, Inc. as the real party in
interest. Appeal Br. 2.
Appeal2017-009183
Application 12/165,648
ILLUSTRATIVE CLAIM
1. A computer-implemented method, comprising:
evaluating, by a computing system, a performance of a
plurality of learners taking at least one lesson of a plurality of
lessons in a learning curriculum;
based upon the evaluation, calculating, by the computing
system, an Effectiveness Factor for the at least one lesson
indicative of a teaching efficacy for the at least one lesson;
associating, by the computing system, the Effectiveness
Factor with the at least one lesson;
forming, by the computing system, an expectation of a
subsequent learner's performance in taking a subsequent lesson;
evaluating, by the computing system, an actual
performance for the subsequent learner in taking the subsequent
lesson;
selectively adjusting, by the computing system, the
Effectiveness Factor for the at least one lesson based on a
performance heuristic applied to the evaluation of the actual
performance for the subsequent learner taking the subsequent
lesson; and
removing from the learning curriculum, by the
computing system, the at least one lesson in response to
determining that the adjusted Effectiveness Factor is below a
threshold.
REJECTION2
Claims 1-3, 5-10, 22-26, 28, 29, 31-34, and 36 are rejected under 35
U.S.C. § 101 as ineligible subject matter.
2 The Final Office Action (pages 4--12) also rejects claims 1-3, 5, 6, 8-10,
26, 28, 29, 31-34, and 36 under 35 U.S.C. § 102(b) and claims 7 and 22-25
under 35 U.S.C. § 103(a). The Examiner's Answer (dated April 20, 2017)
withdraws these rejections. See Answer 3, 11-12.
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Application 12/165,648
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply"' these basic tools of scientific and technological work.
Alice Corp. v. CLS Bankint'l, 573 U.S. 208,217 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under these
judicial exclusions, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
elements" recited in the claim that ( either individually or as an "ordered
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combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 217-18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance with judicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("2019
Revised Guidance"). Under the 2019 Revised Guidance, a claim is "directed
to" an abstract idea, only if the claim recites any of ( 1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes - without integrating such abstract idea into a "practical
application," i.e., without "apply[ing], rely[ing] on, or us[ing] the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." Id. at 52-55. The considerations
articulated in MANUAL OF PATENT EXAMINING PROCEDURE§ 2106.05(a}-(c)
and ( e }-(h) ("MPEP") bear upon whether a claim element ( or combination
of elements) integrates an abstract idea into a practical application. Id. at 55.
A claim that is "directed to" an abstract idea constitutes ineligible subject
matter, unless the claim recites an additional element ( or combination of
elements) amounting to significantly more than the abstract idea. Id. at 56.
Although created "[i]n accordance with judicial precedent" (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court's Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of§ 101. Id. at 53-54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited, Step 2A, Prong 2, addresses whether the recited abstract idea is
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integrated into a practical application. Id. at 54--55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element ( or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
In the present Appeal, neither the Examiner nor the Appellants
question the satisfaction of Step 1 of the 2019 Revised Guidance - i.e., that
the claims are drawn to subject matter within the scope of§ 101.
In relation to Step 2A, Prong One, of the 2019 Revised Guidance, we
note that the Examiner states that independent claims 1, 6, 22, and 26 recite
an "abstract idea" - specifically, the concept of "adjusting the learning
curriculum based on the learner's performance," which the Examiner
regards as a "method of organizing human activities." Final Action 2. The
Examiner states that the claimed subject matter could also be regarded as an
ineligible abstract idea- as an "idea of itself' or as a "mental process."
Answer 7. The Appellants dispute the Examiner's determination -
contending that it lacks the support of case law authority and, in any event,
oversimplifies the claim language. Appeal Br. 12-18.
In analyzing Step 2A, Prong One, we look to the language of claim 1,
noting that it recites: "evaluating, by a computing system, a performance of
a plurality of learners taking at least one lesson of a plurality of lessons in a
learning curriculum"; "forming, by the computing system, an expectation of
a subsequent learner's performance in taking a subsequent lesson";
"evaluating, by the computing system, an actual performance for the
subsequent learner in taking the subsequent lesson"; and "removing from the
learning curriculum, by the computing system, the at least one lesson in
response to determining that the adjusted Effectiveness Factor is below a
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threshold." Notwithstanding the implementation of these steps by a
"computer system" and the designation of the comparison metric as an
"Effectiveness Factor," the foregoing steps describe a process of assessing
student performance in a lesson, assessing expected performance in
subsequent lessons, and modifying subsequent lessons, based upon the
expected performance. These steps fit within the 2019 Revised Guidance's
category of "managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions)" - specifically, the operation of "teaching" - in the grouping
of"[ c ]ertain methods of organizing human activity," which is a type of
"abstract idea." 2019 Revised Guidance, 84 Fed. Reg. at 52. Features
similar to those identified in claim 1 are present in the other independent
claims 6, 22, and 26. Accordingly, each of the claims in the Appeal recites
an abstract idea, under Step 2A, Prong One.
This determination is not altered by the Appellants' assertion that the
claimed subject matter "cannot be said to preempt a fundamental, abstract
concept," because "one can readily adjust a learning curriculum based on a
learner's performance without performing the claimed operations." Appeal
Br. 15. "While 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). See Answer 10.
With regard to Step 2A, Prong Two, of the 2019 Revised Guidance,
unless a claim, reciting a judicial exception (such as an abstract idea),
"integrates the recited judicial exception into a practical application of that
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exception," the claim is "directed to" the judicial exception. 2019 Revised
Guidance, 84 Fed. Reg. at 53.
Notably, the Examiner states that, "[ e ]ven though the claims in the
instant application are tied to computer technology, ... the use of the
computing system is use[ d] ... merely as a tool and for convenience
purposes," such that the claims are not patent-eligible. Answer 7. The 2019
Revised Guidance, 84 Fed. Reg. at 55 explains that such a condition
indicates a lack of integration into a practical application, under Step 2A,
Prong Two. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016) ("[T]he first step in the Alice inquiry in this case asks
whether the focus of the claims is on the specific asserted improvement in
computer capabilities (i.e., the self-referential table for a cornputer database)
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool.")
The Appellants do not present any contrary argument- i.e., to the
effect the claims might integrate the identified judicially excepted subject
matter into a practical application, such as the factors addressed at MPEP
§ 2106.05(a}-(c) and (e}-(h). Accordingly, considering both prongs of Step
2A, we are not persuaded of error in the Examiner's determination that the
claims are directed to an abstract idea.
Turning to Step 2B of the 2019 Revised Guidance, we note that the
Appellants contend that the independent claims, notwithstanding textual
differences among them, employ what the Appellants characterize as
"intermediate steps" (e.g., forming an expectation of a subsequent learner's
performance in taking a lesson, selectively adjusting the Effectiveness
Factor based on a performance heuristic, and comparing a group
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performance of a first portion of a plurality of learners on a third lesson to a
group performance of a second portion of the plurality of learners on the
third lesson) that allegedly amount to "significantly more" than the
identified abstract idea of "adjusting a learning curriculum based on a
learner's performance." Appeal Br. 20-21.
Yet, contrary to the admonition of the 2019 Revised Guidance, to the
effect that Step 2B inquires whether a claim "recite[ s] additional elements
that render the claim patent eligible even though a judicial exception is
recited in a separate claim element" (84 Fed. Reg. at 56), the Appellants rely
upon claim elements that are part of the identified abstract idea, as addressed
above - i.e., claim 1 's limitations of "forming ... an expectation of a
subsequent learner's performance in taking a subsequent lesson" and
"evaluating ... an actual performance for the subsequent learner in taking
the subsequent lesson." Accordingly, the Appellants do not rely upon
"additional elements" in attempting to establish significantly more than the
identified abstract idea. "It has been clear since Alice that a claimed
invention's use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention 'significantly more' than
that ineligible concept." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018).
Furthermore, insofar as the Appellants argue that the calculation of an
"Effectiveness Factor" might amount to "significantly more" (see Appeal
Br. 21 ), no explanation is offered as to why this might be the case. The
Appellants do not point to anything particularly meaningful about the
"Effectiveness Factor" - which simply provides a basis for comparing one
student to another (i.e., a grade) - that could constitute a basis for
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amounting to significantly more than an abstract idea, as identified above.
Consequently, the Appellants' argument does not persuade us of error
in the rejection, as to Step 2B.
Accordingly, in view of the foregoing analysis, we sustain the
Examiner's rejection of claims 1-3, 5-10, 22-26, 28, 29, 31-34, and 36
under 35 U.S.C. § 101.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-3, 5-10, 22-
26, 28, 29, 31-34, and 36 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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