Ex Parte KRISHNADownload PDFPatent Trials and Appeals BoardJun 26, 201914225714 - (D) (P.T.A.B. Jun. 26, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/225,714 03/26/2014 106095 7590 06/28/2019 Baker Botts LLP/CA Technologies 2001 Ross Avenue SUITE 900 Dallas, TX 75201 FIRST NAMED INVENTOR Vikas KRISHNA 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. 063170.A019 1 9557 EXAMINER RAYYAN, SUSANF ART UNIT PAPER NUMBER 2167 NOTIFICATION DATE DELIVERY MODE 06/28/2019 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): PTOmaill@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VIKAS KRISHNA Appeal2018-007071 Application 14/225,7141 Technology Center 2100 Before: ALLEN R. MacDONALD, JEAN R. HOMERE, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-21. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant's Brief ("App. Br.") identifies CA, Inc. as the real party in interest. App. Br. 3. Appeal2018-007071 Application 14/225,714 CLAIMED SUBJECT MATTER The claims are directed to a recommending collaborators based on users' content collections. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving a selected document from a user, the document being a sample of a task that the user would like to find collaborators for; analyzing content of the selected document; clustering the content of the selected document into a plurality of skill axes that would be useful in view of the task; determining a category of skill based on the content of the selected document; locating a plurality of collaborators by matching the category of skill with a corresponding category of skill of a potential collaborator selected from a plurality of potential collaborators; ranking the plurality of collaborators on the corresponding category of skill; and presenting the user with a ranked list of the plurality of collaborators based on the ranking of the plurality of collaborators. App. Br. 19 (Claims Appendix). REJECTIONS Claims 1-21 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Ans. 16-23.2 2 The Examiner introduced the eligibility rejection in the Examiner's Answer. Appellant did not seek to reopen prosecution, and instead argued against the rejection in the Reply Brief. 2 Appeal2018-007071 Application 14/225,714 Claims 1-21 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kang et al. (US 2015/0025928 Al, published Jan. 22, 2015) ("Kang") and Lambroschini (US 2015/0088567 Al, published Mar. 26, 2015) ("Lambroschini"). REJECTION UNDER 35 U.S.C. § 101 Standard for Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. v. CLS Bank Int'!, 573 U.S. 208 (2014). The Supreme Court instructs us to "first determine whether the claims at issue are directed to a patent-ineligible concept," Id. at 216-18, and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If the initial threshold is met, we then move to the second step, in which we "consider the elements of each claim 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. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the second step 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 Mayo, 566 U.S. at 72- 73). The USPTO recently published revised guidance on the application of § 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019 3 Appeal2018-007071 Application 14/225,714 ("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); and (2) additional elements that integrate the judicial exception into a practical application (see 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 is 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 52. Examiner's Findings and Conclusion In the first step of the Alice inquiry, the Examiner determines the independent claims are directed to an abstract idea "of providing a ranked list of collaborators based on matching the requisite skills of a user's selected documents with the category skill of the potential collaborators." Ans. 16. The Examiner further determines the claims are directed to an abstract idea because "the claim does not require the method to be performed by a computer" and "[t]he method could be performed by a human being mentally or with pen and paper." Ans. 18. 4 Appeal2018-007071 Application 14/225,714 In Alice step 2, the Examiner finds "Claim 1 does not include additional elements as each of the elements of claim 1 are part of the abstract idea." Ans. 18. Appellant's Contentions3 Appellant asserts error in the Examiner's step 1 analysis. Reply. Br. 4. First, Appellant argues: The Examiner's characterization of the claims omits the claim elements realizing the technological improvements related to the processing and transformation of a user-input documents to a different output. In so doing, the Examiner improperly construes the claims to a high level of abstraction. Claim 1 is directed to a process for processing user-selected documents describing a task wherein data captured and derived from the user-input document is used to automatically determine and present the user with a ranked list of potential collaborators based on the document selected by the user. More specifically, Claim 1 is directed to a technique and system where a user can select a document that describes a task, input that document into the system, and the system will extract data and process the document according to the claimed technique to automatically output to the user a list of potential collaborators, thereby transforming the data input (sample task) to a different data output (ranked list of collaborators), using a specific and unique technique. Reply Br. 4. 3 Appellant's arguments all are directed to independent claim 1. Appellant did not present separate arguments for independent claim 8 and independent claim 15. As such, we treat claim 1 as representative, and our decision as to claim 1 is dispositive of the rejections made under§ 101. 37 C.F.R. § 41.67(c)(l)(vii) ("When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone.") 5 Appeal2018-007071 Application 14/225,714 Appellant also argues the Examiner's Alice step 2 findings are flawed because: [T]he rejected claims include several advances over the prior art, as Appellant argued in its Appeal Brief, which are herein incorporated by reference. And each of those advances are directed to the implementation and application of the claimed technique and system where a user can select a document that describes a task, input that document into the system, and the system will extract data and process the document according to the claimed technique to automatically output to the user a list of potential collaborators, thereby transforming the data input (sample task) to a different data output (ranked list of collaborators), not the alleged abstract idea. Reply Br. 6. Our Review Applying the guidance set forth in the Memorandum, we are not persuaded the Examiner has erred in rejecting the claims as being directed to patent-ineligible subject matter. The Memorandum instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The guidance identifies three judicially-excepted groupings: ( 1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices or managing personal behavior or relationships or interactions between people, and (3) mental processes. We focus here on the third grouping-mental processes. A claim recites a mental process when the claim encompasses acts people can perform using their minds or pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) ( determining that a claim whose "steps can be performed in the 6 Appeal2018-007071 Application 14/225,714 human mind, or by a human using a pen and paper" is directed to an unpatentable mental process). This is true even if the claim recites that a generic computer component performs the acts. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) ("Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person's mind."); see also 2019 Eligibility Guidance 84 Fed. Reg. at 52 n.14 ("If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind."). Claim 1 recites the following limitations: (1) "receiving a selected document from a user, the document being a sample of a task that the user would like to find collaborators for;" (2) "analyzing content of the selected document;" (3) "clustering the content of the selected document into a plurality of skill axes that would be useful in view of the task;" (4) "determining a category of skill based on the content of the selected document;" (5) "locating a plurality of collaborators by matching the category of skill with a corresponding category of skill of a potential collaborator selected from a plurality of potential collaborators;" ( 6) "ranking the plurality of collaborators on the corresponding category of skill;" and (7) "presenting the user with a ranked list of the plurality of collaborators based on the ranking of the plurality of collaborators." App. Br. 19 (Claims Appendix). These limitations, under their broadest reasonable interpretation, recite steps which are an abstract mental process. More specifically, each of 7 Appeal2018-007071 Application 14/225,714 these limitations recites the operations that can be practically performed by a person using their mind, or with the aid of pen and paper. For example, limitation (1) which recites receiving a document that is a sample of a task, could be performed simply by handing a person a piece of paper. Limitation (2), which recites analyzing the received document is merely an evaluation that is readily performed by a human in their mind. Limitation (3) which recites clustering the content of the selected document into a plurality of skill axes could also be performed by a human by organizing the content either in their mind or by drawing clusters and skill axes on a piece of paper. Limitation (4), which recites determining a category of skill based on the document is an evaluation of the documents that also would be readily performed mentally by a person. Limitations (5) and (6) which involve identifying matching collaborators and ranking them are also readily performed via observation and evaluation. Finally, limitation (7), which recites presenting the user with a ranked list is easily performed using pen and paper simply by writing the list down and showing it to the user. Because each of these steps recites an operation which can be performed by a human either mentally or with the aid of pen and paper, we conclude the claims recite a judicial exception of a mental process, which is an abstract idea. Having determined that the claims recite a judicial exception, our analysis under the Memorandum turns to (Step 2A, prong 2) determining whether there are "additional elements that integrate the judicial exception into a practical application." See MPEP § 2106.05(a)-(c), (e)-(h). Appellant's claim 1 does not recite any additional elements, as each of the elements of the claim recite a mental process. As such, we agree with the 8 Appeal2018-007071 Application 14/225,714 Examiner that "[ c ]laim 1 does not include additional elements as each of the elements of claim 1 are part of the abstract idea." Ans. 18.4 The same analysis also applies under Step 2B in the Memorandum (i.e., Alice step 2). Because claim 1 recites no additional elements that are not part of the judicial exception, we agree with the Examiner that the claims "not include additional elements that are sufficient to amount to significantly more than the judicial exception." Ans. 17. Accordingly, we sustain the rejection under 35 U.S.C. § 101. REJECTION UNDER 35 U.S.C. § 103 "clustering the content ... into a plurality of skill axes" The Examiner rejects the claims as unpatentable over the combined teachings of Kang and Lambroschini. Final Act. 6-7. Claims 1 and 15 each recite the limitation "clustering the content of the selected document into a plurality of skill axes that would be useful in view of the task." The Examiner relies on Lambroschini as teaching this limitation. Final Act. 7 ( citing Lambroschini ,-J,-J 35, 36). The Examiner explains that the cited 4 Although we do not consider claims 8 and 15 separately, were we to do so, our analysis would not change because they recite certain computer-related limitations. The recitation of computer hardware or software, without any additional detail of its structure or configuration, is not sufficient to integrate the judicial exception into a practical application. See MPEP §§ 2106.05(b)(I) ("It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine."), 2106.05(±) ("Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional elements amount to more than a recitation of the words 'apply it' ( or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer."). 9 Appeal2018-007071 Application 14/225,714 paragraphs in Lambroschini described the use of a new project input web page having a selectable and hierarchical menu corresponding to a taxonomy of candidate skills. Final Act. 7; see also Ans. 33-34. Appellant contends the cited references do not teach or suggest this limitation. More specifically, Appellant argues the cited portions of Lambroschini "simply describes a web page that allows the user to specify (through a hierarchical menu) required skills associated with a new project." App. Br. 12. We agree that Lambroschini fails to teach or suggest the argued limitation. Lambroschini describes a system by which project needs and candidate skills are matched to build a project team from a pool of candidates. Lambroschini, Abstract. Lambroschini describes providing a "project input web page [which] includes input field(s) for the user ... to submit at least a name and a description of the new project." Lambroschini ,-J 35. Although Lambroschini describes organizing in hierarchical menus required skills for a new project, those required skills are inputted by a user using the hierarchical menus, and they are not obtained from a selected document. See, e.g., Lambroschini ,-J 36 ( [T]he new project input web page includes a selectable and hierarchical menu corresponding to a taxonomy that facilitates submission by the user .. . of required skills associated with the new project.") Moreover, even if Lambroschini could be fairly characterized as using a "selected document" to identify skills useful for performing the task, there is no mention of clustering of any content, nor is there any teaching of clustering the content "into a plurality of skill axes," as recited in claim 1. The Examiner does not adequately explain how the use of hierarchical 10 Appeal2018-007071 Application 14/225,714 menus is the same as, or otherwise renders obvious, "clustering the content of the selected document into a plurality of skill axes that would be useful in view of the task." Without such an explanation, we agree with Appellant that the Examiner has not shown the argued limitation to be obvious, and we do not sustain the rejection of claim 1. For the same reason, we also do not sustain the rejection of independent claim 15, which recites a similar limitation. Claims 2-7 and 16-21 depend from claim 1 and claim 15, respectively. Therefore, we also do not sustain the rejection of these dependent claims. 5 "locating a plurality of collaborators . .. " Appellant further argues the Examiner's rejection of claim 8 is in error because Kang and Lambroschini fail to teach or suggest "locating a plurality of collaborators by matching the category of skill with a corresponding category of skill of a potential collaborator selected from a plurality of collaborators." App. Br. 10-11. In rejecting claim 8, the Examiner finds Kang teaches this limitation. Final Act. 6 ( citing Kang ,-J 32). More specifically, the Examiner finds that this limitation is rendered obvious by Kang because Kang teaches that a "mapping may be used later then matching individual skills ( e.g. the first set of skills) against the desired skill ( e.g. the second set of skills) for the required task accomplishment." Id. Appellant argues Kang is deficient because "[t]he 'mapping' discussed in Kang refers to a 'skill dictionary' that 'includes synonym tables to obtain the skill hierarchy"' and that "the 'skill dictionary' is maintained 5 Our determination with respect to the "clustering" limitation is dispositive as to claims 1-7 and 15-21. Independent claim 8 does not recite the "clustering" limitation. Therefore, we address Appellant's remaining arguments as to claim 8 and its dependent claims below. 11 Appeal2018-007071 Application 14/225,714 'so that the common synonyms can be translated and mapped onto a desired skill hierarchy."' App. Br. 11 ( citing Kang ,i 32). According to Appellant, "Kang 's discussion of a skill dictionary to translate and map synonyms of a desired skill hierarchy does not disclose, teach, or suggest 'locating a plurality of collaborators by matching the category of skill of a potential collaborator selected from a plurality of collaborators."' Id. We disagree. Kang discloses "[a] method, a system, and a computer program product for recommending one or more employees from a group of employees for a task." Kang, Abstract. Kang further describes identifying skills associated with each employee and matching those skills with those needed to accomplish a task. See, e.g., Kang ,i 32 ("matching individual's skills ( e.g., the first set of skills) against the desired skills ( e.g., the second set of skills) for required task accomplishment"), see also Fig. 3 (steps 302, 304). We agree with the Examiner that this disclosure in Kang is sufficient to render the argued limitation obvious. Appellant's argument seeks to distinguish the claim based on Kang' s discussion of a skill dictionary, but does not address Kang' s discussion of matching individual skills with those required for task accomplishment. As such, we are not persuaded the Examiner erred with respect to the limitation of "locating a plurality of collaborators by matching the category of skill with a corresponding category of skill of a potential collaborator selected from a plurality of collaborators," as recited in claims 1, 8, and 15. Reasons for Combining Kang and Lambroschini In rejecting the claims under§ 103, the Examiner combines the teachings of Kang and Lambroschini. Final Act. 7. The Examiner finds a person of skill in the art would have modified Kang with the teachings of 12 Appeal2018-007071 Application 14/225,714 Lambroschini because Lambroschini recognized the benefit of "compar[ing] various project teams for the new project to determine the optimal combination of candidates." Id. ( citing Lambroschini ,i 59), and Kang would further this goal. Appellant challenges the Examiner's rationale for combining Kang and Lambroschini. App. Br. 12. In particular, Appellant argues the Examiner's rationale "is nothing more than a suggestion that the two references are analogous art, i.e., that they are useful toward a common goal or are in the same field of endeavor." Id. We disagree. The standard for determining whether a claim is obvious is "an expansive and flexible approach." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007). Here, the Examiner has provided articulated reasoning with a rational underpinning for the combination. KSR Int'! Co., 550 U.S. at 418. Appellant's argument points to no specific failing in the Examiner's rationale for combining the references, and instead merely asserts that it is insufficient. Accordingly, we are not persuaded the Examiner erred in combining Kang and Lambroschini. Dependent Claim 10, Appellant argues separately for patentability of dependent claim 10. App. Br. 13-16. We are persuaded by Appellant's argument. Claim 10 recites the limitation "the user content of each potential collaborator comprises an entire body of documents created or edited by the potential collaborator." App. Br. 19 (Claims Appendix). The Examiner relies upon Kang for this limitation, but we agree with Appellant that Kang makes no reference to any body of documents "created or edited by the potential collaborator." Although Kang describes using certain documents to identify 13 Appeal2018-007071 Application 14/225,714 skills associated with employees, there is no indication that the documents used by Kang are those "created or edited by the potential collaborator." As such, we do not sustain the rejection of claim 10. Claims 11-13 depend from claim 10. We also do not sustain their rejections for the same reasons. DECISION We reverse the Examiner's rejection of claims 1-7, 10-13, and 15-21 under 35 U.S.C. § 103. We affirm the Examiner's rejection of claims 8, 9, and 14 under 35 U.S.C. § 103. We affirm the Examiner's rejection of claims 1-21 under 35 U.S.C. § 101. Because we have affirmed at least one ground of rejection for each claim on appeal, we affirm the Examiner's decision to reject the claims. 37 C.F.R. § 41.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R. § l.136(a)(l )(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation