Ex Parte KELKAR et al

Patent Trials and Appeals Board

May 17, 2019

13173115 - (D) (P.T.A.B. May. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/173, 115 06/30/2011 Bhooshan Prafulla KELKAR
67046 7590 05/21/2019
HOLLAND & KNIGHT
10 ST. JAMES A VENUE
BOSTON, MA 02116-3889
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.
IN920110108US 1/00220 8581
EXAMINER
MISIASZEK, AMBER AL TSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/21/2019 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):
patentdocketing@hklaw.com
robyn.lecesse@hklaw.com
Daniel.Juffre@hklaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BHOOSHAN PRAFULLA KELKAR and
MARESH SHIVRAM PARADKAR
Appeal2018-003223
Application 13/173,115 1
Technology Center 3600
Before DAVID M. KOHUT, ERIC B. CHEN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 7, 9, 12, 13, 15, 22, and 23. Claims 1-6, 8, 10, 11, 14, 16-21, 24, and
25 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party of interest is "International
Business Machines Corporation." (Br. 4.)
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Application 13/173,115
STATEMENT OF THE CASE
Appellants' invention relates to "human resource analytics using
profile data." (Abstract.)
Claim 7 is exemplary:
7. A computer program product residing on a
non-transitory computer readable storage medium having a
plurality of instructions stored thereon, which, when executed
by a processor, cause the processor to perform operations
compnsmg:
receiving historical project data, wherein the historical
project data includes at least one profile of at least one
historical project team member, one or more historical project
requirements, and one or more historical project results;
determining psychometric data associated with the at
least one historical project team member, through sentiment
analysis of at least one social networking source, wherein the
psychometric data includes psychological characteristics and
mental abilities of the at least one historical project team
member wherein sentiment analysis includes identifying at least
one of a positive, negative, and neutral sentiment from at least
one of a post and a comment from the at least one social
networking source, wherein the at least one social networking
source includes at least one of a blog, a social networking site
and a social interaction site;
generating updated historical project data including, at
least in part, adding psychometric data associated with the at
least one historical project team member to the at least one
profile included in the historical project data;
receiving one or more new project requirements
associated with a new project identifying a similarity between
the one or more historical project requirements and the one or
more new project requirements, including comparing the
psychometric data of the at least one historical project team
member to the one or more new project requirements;
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Application 13/173,115
identifying an indication of success associated with the
psychometric data included in the updated historical project
data and with the one or more historical project requirements
identified as similar to the one or more new project
requirements;
determining a set of modified project requirements for
the new project based upon, at least in part, identifying the
indication of success and the psychometric data associated with
the at least one historical project team member determined
through sentiment analysis; and
determining a ranked list of various possible team
compositions that are optimal for the one or more new project
requirements based upon, at least in part, the psychometric data
associated with the at least one historical project team member
determined through sentiment analysis.
Claims 7, 9, 12, 13, 15, 22, and 23 stand rejected under 35 U.S.C.
§ 101 as directed to patent ineligible subject matter.
Claims 7, 9, 12, 13, 15, 22, and 23 2 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1, 3, 6, 18, and 19 of commonly-owned Application No.
13/440,307.3
2 Appellants do not present any substantive arguments with respect to the
rejection of claims 7, 9, 12, 13, 15, 22, and 23 under the judicially created
doctrine of obviousness-type double patenting. Thus, any such arguments
are deemed to be waived. As a result, we summarily sustain the Examiner's
obvious-type double patenting rejection.
3 An appeal for Application No. 13/440,307 was docketed as Appeal
2018-003016 on February 5, 2018.
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ANALYSIS
We are persuaded by Appellants' arguments (Br. 17-18) that the
Examiner has not satisfied the proper burden for making a prima facie case
for patent ineligibility under 35 U.S.C. § 101.
With respect to independent claim 7, the Examiner determined that
the operations claimed "when considered both individually and as a whole
are directed to actions that facilitate receiving historical project data of a
historical project team member to compose a team of members determined
through sentiment analysis." (Final Act. 9.) In particular, the Examiner
determined that claim 7 "effectively relate[ s] to collecting and comparing
known information, which was deemed an abstract concept by the Courts
(Classen) . .. similar to comparing new and stored information and using
rules to identify options, which was also deemed an abstract concept by the
courts (SmartGene)" (id.) and "effectively relate[s] to interpersonal and
intrapersonal activities and manage transactions between people (buySAFE)"
(id. at 10). We agree that the Examiner has not satisfied the proper burden
for a prima facie case.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
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Application 13/173,115
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
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of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019). 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed.
2019).
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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 84 Fed. Reg. at 56.
Although the Examiner generally states that independent claim 7
"effectively relate[ s] to collecting and comparing known information" and
"effectively relate[ s] to interpersonal and intrapersonal activities and
manage[ ment] [ of] transactions between people" with citations to multiple
Federal Circuit cases, these statements neither: (a) identify the specific
limitations in the claims under examination that the Examiner believes recite
an abstract idea; nor (b) demonstrate the identified limitations fall within the
subject matter groupings of abstract ideas of mathematical concepts, certain
methods of organizing human activity, or mental processes. See 84 Fed.
Reg. at 56. In particular, the Examiner neither accounts for all the
limitations recited in claim 7, nor adequately articulates why the claimed
concepts are analogous to the facts of Classen, 4 SmartGene, 5 and buySAFE. 6
For example, the Examiner has not adequately addressed the limitation
4 Classen v. Immunotherapies, Inc. v. Biogen Idec, 659 F.3d 1057 (Fed. Cir.
2011).
5 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x. 950
(Fed. Cir. 2014).
6 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014).
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"determining psychometric data associated with the at least one historical
project team member, through sentiment analysis of at least one social
networking source ... wherein the at least one social networking source
includes at least one of a blog, a social networking site and a social
interaction site" ( emphasis added).
Accordingly, we are persuaded by Appellants' arguments that "the
Examiner has failed to establish a prim a facie case of unpatentability."
(Br. 17-18.)
Thus, we do not sustain the rejection of independent claim 7 under 3 5
U.S.C. § 101. Claims 9 and 12 depend from independent claim 7. We do
not sustain the rejection of claims 9 and 12 under 35 U.S.C. § 101 for the
same reasons discussed with respect to independent claim 7.
Independent claims 13 and 22 recite limitations similar to those
discussed with respect to independent claim 7. We do not sustain the
rejection of claims 13 and 22, as well as dependent claims 15 and 23, for the
same reasons discussed with respect to claim 7.
DECISION
The Examiner's decision rejecting claims 7, 9, 12, 13, 15, 22, and 23
under 35 U.S.C. § 101 is reversed.
The Examiner's decision rejecting claims 7, 9, 12, 13, 15, 22, and 23
under the judicially created doctrine of obviousness-type double patenting is
affirmed.
Because at least one rejection encompassing all claims on appeal is
affirmed, the Examiner's decision 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. § l .136(a)(l )(iv).
AFFIRMED
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