Ex Parte Haertel et al

Patent Trial and Appeal Board

Aug 21, 2018

14167146 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/167,146 01/29/2014
28863 7590 08/23/2018
SHUMAKER & SIEFFERT, P.A.
1625 RADIO DRIVE
SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Geneva D. Haertel
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.
1248-023US01/6857-2 9742
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GENEVA D. HAERTEL,
TERRY VENDLINSKI,
DAISY RUTSTEIN,
ANDREW SALSBURY,
CHRIS MAKLER,
PATRICIA SCHANK, and
JOHN J. BRECHT
Appeal2017-009574
Application 14/167, 146
Technology Center 3700
Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1-3, 5-9, and 11-23 that "have been at least twice
1 According to Appellants, the real party in interest is SRI International.
App. Br. 2.
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rejected." App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). For the
reasons explained below, we AFFIRM the Examiner's rejections.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to educational
assessment design, and relates more particularly to systems for constructing
evidence-centered designed educational assessment items. "2 Spec. ,r 1. In
other words, the disclosed subject matter relates to "[a] system for guiding a
user in a construction of' questions [i.e., a test] designed to evaluate a
student's knowledge. Spec. ,r 6. Claims 1, 15, and 18 are independent.
Claim 1 is illustrative of the claimed subject matter and is reproduced below:
1. A method for guiding a user in a construction of an
assessment item, the method comprising:
identifying a requirement of the assessment item,
wherein the identifying comprises:
presenting a plurality of selectable assessment
targets, and
receiving a signal from the user indicating a
selection of an assessment target from among the
plurality of selectable assessment targets;
filtering a plurality of documents in accordance with the
identified requirement to produce a set of relevant documents;
presenting a workflow for use in constructing a proposed
assessment item, wherein the workflow is based on the set of
relevant documents, and wherein the workflow comprises a
sequence of prompts relating to the identified requirement;
2 Appellants' Specification states, "[w]ithin the context of the present
invention, an 'assessment item' is a[ n] article (e.g., a question) that is
designed to gather information useful in evaluating a student's knowledge,
skill, or ability (i.e., what he knows, can do, or has accomplished or
learned)." Spec. ,r 14.
2
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presenting a set of questions to the user, the set of
questions comprising guides to verify that the proposed
assessment item meets the identified requirement;
receiving responses to the set of questions from the user;
and
validating whether the proposed assessment item meets
the identified requirement based, at least in part, on the received
responses.
REJECTIONS ON APPEAL 3
Claims 1-3, 5-9, and 11-23 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more.
Claims 1-3, 5-9, and 11-23 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
ANALYSIS
The rejection of claims 1-3, 5-9, and 11-23
as being directed to a judicial exception
Appellants argue all the claims together. App. Br. 6-7. We select
independent claim 1 for review, with the remaining claims standing or
falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants understand that the Examiner rejected claim 1 "as being
directed to an abstract idea without significantly more." App. Br. 6. This
follows the Examiner's multi-part analysis regarding the subject matter
recited in claim 1. See Non-Final Act. 2--4. Appellants disagree with the
3 The rejection of claims 1-3, 5-9, and 11-23 under 35 U.S.C. § 112, second
paragraph, as being indefinite, has been withdrawn. Ans. 7.
3
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Examiner's assessment and address the "validating" step stating, "the
unconventional combination of validating ... , in combination with the other
recited processes" renders claim 1 patentable subject matter. App. Br. 6.
This is because, according to Appellants, "the Examiner withdrew the
previous rejections of the claims under 35 U.S.C. § 103," thereby
"acknowledging that the claims are inventive with respect to the teachings of
the cited art." App. Br. 6-7; Reply Br. 2 ("the claimed functions are new"
because the Examiner "previously withdr[ew] the prior art rejections").
Thus, Appellants conclude, "the combination of processes and elements
operates in a nonconventional and non-generic way," and as such, "the
claims recite inventive concepts under the Supreme Court's test for subject
matter eligibility." App. Br. 7; see also Reply Br. 2.
The Examiner rightfully responds stating, "the test for patent
eligibility under § 101 is separate and distinct from the tests for novelty and
patent eligibility under§ 102 and§ 103." Ans. 7 (referencing Elec. Power
Grp. v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner further
reiterates, "the instant invention focuses on a combination of abstract idea
processes, namely collecting requirements information from a user,
obtaining documents based on the information, collecting further
information from the user through responses to questions, and performing a
validation based on the information and the documents." Ans. 8; see also
Non-Final Act. 2-3. As to any "additional limitations," the Examiner states
that such "limitations are limited to routine and conventional computer
technology as detailed above and do not reflect an improvement to the
functioning of a computer or to any particular technological area." Ans. 8;
see also Non-Final Act. 3--4. The Examiner concludes, "[a]s in EPG, the
4
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inventive concept is thus drawn to an abstract idea, not to any inventive
technology for performing the abstract idea." Ans. 8.
Appellants also address the above case contending, "[i]n the present
application, however, the claimed functions are new" and that "[t]he
Examiner acknowledged this by previously withdrawing the prior art
rejections." Reply Br. 2; see also App. Br. 6-7. Thus, Appellants repeat the
contention that because "the claimed functions themselves are new ... [the
claims] recite inventive concepts under the Supreme Court's test for subject
matter eligibility." Reply Br. 2.
As indicated above, Appellants repeatedly rely on the Examiner's
withdrawal of a prior art rejection as an indication that the recited
combination of steps is new and novel, and thus proper subject matter for
patentability. However, Appellants' argument, premised on the Examiner's
withdrawal of a Section 103 rejection, is not persuasive that the Examiner
erred in categorizing claim 1 as being directed to ineligible subject matter
under Section 101. For example, we have been instructed that "[t]he § 101
patent-eligibility inquiry is only a threshold test. Even if an invention
qualifies in one of the four categories, it must also satisfy 'the conditions and
requirements of this title,' § lOl(a), including novelty, see§ 102,
nonobviousness, see§ 103, and a full and particular description, see§ 112."4
4 The Supreme Court expressed a similar need to satisfy all the requirements
of the Patent Laws stating:
we must distinguish between patents that claim the "buildin[g]
block[s]" of human ingenuity and those that integrate the
building blocks into something more [citation omitted], thereby
"transform[ing]" them into a patent-eligible invention[ citation
omitted]. The former "would risk disproportionately tying up
the use of the underlying" ideas [citation omitted], and are
5
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Bilski v. Kappas, 561 U.S. 593, 594 (2010); see also id. at 602. Hence,
Appellants' argument that the claims are directed to patentable subject
matter under Section 101 because the Examiner withdrew a prior art
rejection is not persuasive that the recited claims are, indeed, directed to
patentable subject matter.
The rejection of claims 1-3, 5-9, and 11-23
as failing to comply with the written description requirement
Appellant argues claims 1-3, 5-9, and 11-23 together. App. Br. 7-9.
We select independent claim 15 for review, with the remaining claims
standing or falling therewith. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner references the last two limitations which are directed to
"receiving responses ... from the user" and "validating ... based, at least in
part, on the received responses." Non-Final Act. 4--5. The Examiner states,
"it appears [ that such steps occur] by the processor or other entity receiving
the responses, not by the user." 5 Non-Final Act. 4--5; see also Ans. 9. The
Examiner explains, "[t]he specification does not provide support for such a
feature of the other entity or processor making the determination" and as
therefore ineligible for patent protection. The latter pose no
comparable risk of pre-emption, and therefore remain eligible
for the monopoly granted under our patent laws.
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354--55 (2014).
See also id. at 2357 (stating that because the algorithm was an abstract idea,
the claim had to supply a 'new and useful' application of the idea in order to
be patent eligible).
5 Claim 15 recites, "the program causes a processor to perform steps of: ...
receiving responses ... and validating ... based, at least in part, on the
received responses."
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such, "the specification does not appear to provide support for the claimed
features." Non-Final Act. 5; see also Ans. 9.
Appellants reference several paragraphs in Appellants' Specification
in an effort to show that written description support exists for such language.
See App. Br. 7-9 (referencing ,r,r 6, 16, 18, 23, 27); see also Reply Br. 4.
Appellants address each referenced paragraph stating, (a) Paragraphs 6 and
16 discuss a "user interface" used "to lead the user;" (b) Paragraph 18 is
directed to a server "guiding" the "validation;" (c) Paragraph 23 addresses a
"user endpoint device [that] receives responses from the user and sends a
signal to the server that is representative of that response;" and, ( d)
Paragraph 27 pertains to a "user interface [that] presents a set of questions
for use in the validation phase." Reply Br. 4. Thus, Appellants contend,
"the 'validating' feature is described in the specification as being based on
the inputs received from the user at the user interface." Reply Br. 4.
However, the issue raised by the Examiner is not whether or not there
is written description support for the recitation "based, at least in part, on the
received responses" as recited. Instead, the Examiner is questioning whether
there is written description support for the processor or other entity (i.e., "not
by the user") performing the validation step because "the invention as
claimed requires the program or system ... to actively perform the
validation," and, according to the Examiner, this is not disclosed. Non-Final
Act. 4--5; Ans. 9. The Examiner further relies on Appellants' own disclosure
to the effect that "[i]t is noted that the set of questions alone is typically not
enough to entirely validate the potential assessment item" thereby
undercutting at least point (d) above made by Appellants. Non-Final Act. 5
(referencing Spec. ,r 27).
7
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Our review of Appellants' Specification leads to the same conclusion
as reached by the Examiner. For example, original independent claims 1
and 15 recited that the validation is "by the user." Further, Appellants'
Abstract and Summary of the Invention also clearly disclose validation "by
the user." See Spec. ,r,r 4, 5. As is evident, original independent claim 15
has been amended so as to now recite that the validation step is no longer
performed "by the user," but instead by a "processor." The Examiner thus
( correctly) asks where written description support for this change to a
processor exists. See Non-Final Act. 4--5. Appellants' contentions above
are not persuasive that such support exists.
Accordingly, and in view of the record presented, we agree with the
Examiner that Appellants' identified "sections of the specification do not
disclose that the server performs the validation, but instead disclose the user
performs the validation with the server acting as a passive guide. " 6 Ans. 9.
Consequently, we sustain the Examiner's rejection of claims 1-3, 5-9, and
11-23 as failing to comply with the written description requirement.
DECISION
We affirm the Examiner's rejections of claims 1-3, 5-9, and 11-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
6 It is also the situation that Appellants' Specification, lacking proper written
description support, also lacks proper enablement of the recited claims as
well.
8