Ex Parte Liu et al

Patent Trial and Appeal Board

Jan 9, 2018

14105233 (P.T.A.B. Jan. 9, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
1576-1164 9283
EXAMINER
DESIR, PIERRE LOUIS
ART UNIT PAPER NUMBER
2659
MAIL DATE DELIVERY MODE
14/105,233 12/13/2013 Fei Liu
10800 7590 01/09/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
01/09/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FEI LIU, FULIANG WENG, CHAO SHEN, and
LIN ZHAO
Appeal 2017-008769
Application 14/105,2331
Technology Center 2600
Before ALLEN R MACDONALD, IRVIN E. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Technology
The application relates to “generating summaries of events using
messages from observers of the events.” Spec. 12.
1 According to Appellants, the real party in interest is Robert Bosch GmbH.
App. Br. 3.
Appeal 2017-008769
Application 14/105,233
Illustrative Claim
Claim 1, is illustrative and reproduced below:
1. A method of processing messages pertaining to an event
comprising:
receiving, with a network device in a summarization
system, a plurality of messages pertaining to the event from
electronic communication devices associated with a plurality of
observers of the event;
generating, with a processor in the summarization system,
a first message stream that includes only a portion of the plurality
of messages corresponding to a first participant in the event;
identifying, with the processor in the summarization
system, a first sub-event in the first message stream with
reference to a time distribution of messages and content
distribution of messages in the first message stream;
generating, with the processor in the summarization
system, a sub-event summary with reference to a portion of the
plurality of messages in the first message stream that are
associated with the first sub-event; and
transmitting, with the network device in the
summarization system, the sub-event summary to a plurality of
electronic communication devices associated with a plurality of
users who are not observers of the event.
References and Rejections2
Claims 1—18 stand 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. Final
Act. 10-12.
2 Throughout this opinion, we refer to (1) Final Action mailed July 27, 2106
(“Final Act.”); (2) the Appeal Brief filed Dec. 27, 2016 (“App. Br.”); (3) the
Examiner’s Answer mailed Apr. 4, 2017 (“Ans.”); and (4) the Reply Brief
filed May 30, 2017 (“Reply Br.”).
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Application 14/105,233
Claims 1—4 and 10—13 stand rejected under 35 U.S.C. § 102(a)(2) as
anticipated by Bendel (US 2011/0320542 Al, published Dec. 29, 2011).
Final Act. 13—18.
Claims 5 and 14 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Bendel and Rose (US 2011/0004465 Al, published
Jan. 6, 2011). Final Act. 19—20.
Claims 6 and 15 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Bendel and Chua (Freddy Chong Tat Chua &
Sitaram Asur, Automatic Summarization of Events from Social Media,
hereinafter, “Chua”). Final Act. 20—21.
Claims 7—9 and 16—18 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Bendel, Chua, and Chen
(US 2011/0184806 Al, published July 28, 2011). Final Act. 22-27.
ANALYSIS
Section 101 Rejection
In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (2012), “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts,” such as an abstract idea. Id. If the
claims are directed to a patent-ineligible concept, the second step in the
analysis is to consider the elements of the claims “individually and ‘as an
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ordered combination’” to determine whether there are additional elements
that ‘“transform the nature of the claim’ into a patent-eligible application.”
Id. (citing Mayo, 566 U.S. at 78—79). In other words, the second step is to
“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.
(citing Mayo, 566 U.S. at 72—73).
Here, the Examiner finds that, although claim 1 is directed to a
method—a statutory category of invention—the method is “only comprised
of steps therein directed to either (a) conventional activities for collecting or
presenting data (receiving messages; transmitting data to devices associated
with users), or (b) actions that can be considered as part of abstract idea “of
itself’: specifically the assessment and arrangement of data.” Final Act. 10.
Thus, the Examiner finds claims 1—18 patent eligible under statute, but
patent ineligible by judicial exception. Id. at 10-12; Ans. 2—16.
Appellants argue error because “the reasoning of the Office Action is
improperly untethered from the actual limitations of the pending claims and
does not properly establish that these claims are in fact directed to an
abstract idea” and also because “any attempt to correct the lack of reasoning
in the Office Action would be futile since the specific claim limitations are
clearly not directed to an abstract idea.” App. Br. 11; see App. Br. 8—18;
Reply Br. 2—9.
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Application 14/105,233
We disagree with Appellants’ arguments. The Examiner’s analysis
does, in fact, address the actual limitations of the pending claims.
Specifically, the Examiner finds:
the steps of the method are only comprised of limitations within
the scope of ineligible subject matter in the form of an abstract
idea “of itself’ such as accessing or collecting data
(“receiving ... a plurality of messages ... ”, “identifying ... a
first sub-event. . . ”), assessing and arranging data (“identifying
... a first sub-event... ”, “generating ... a first message stream
... ”, “generating ... a sub-event summary”), or to functions that
may require more than the abstract idea itself, but not more than
would be understood to be well-known and conventional in the
industry, such as transmitting data across a network which is not
defined in any particularly significant way (“transmitting, with
the network device in the summarization system, the sub-event
summary...”).
Ans. 3^4. We agree with the Examiner’s conclusion that the claims are
directed to an abstract idea. Id. at 2—5.
Appellants attempt to liken the claims at issue here to those the
Federal Circuit found patent eligible in “McRo” (.McRo, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)). App. Br. 10—
13; Reply Br. 3—6. Appellants argue
the reasoning of McRo is directly applicable to the pending
claims where the ordered combination of steps in claims 1 and
10 allow for the improvement realized by the limitations of the
claims that enable automation of a process for the generation and
transmission of sub-event summaries. Using claim 1 as an
example, this claim includes specific rules for a method
including generating a first message stream that includes only a
portion of the plurality of messages corresponding to a first
participant in the event, identifying a first sub-event in the first
message stream with reference to a time distribution of messages
and content distribution of messages in the first message stream,
and generating a sub-event summary with reference to a portion
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of the plurality of messages in the first message stream that are
associated with the first sub-event. These specific rules allow for
a computerized system to generate sub-event summaries in an
automated manner that is clearly not equivalent to prior-art
conventional human activity. Applicants note that while McRo
is in a much different technical field, the claim at issue in McRo
also deals with receiving some “known” input data (phonemes
with sequences) and performing operations based on a set of
rules to generate an output (the a sequence of animated characters
with lip synchronization and facial expression control). Thus,
claims 1 and 10 are clearly analogous in structure to the
allowable claims at issue in McRo and for at least this reason the
section 101 rejection of these claims should be reversed.
Reply Br. 5—6. Appellants argue further:
Applicants further note that other than an allegation that these
claims are directed to a mere idea in and of itself, there is no
evidence of record to support the allegations from the Office
Action and Answer using the standard set forth in McRo. The
Answer continues the errors described above by conflating so-
called mental process with “conventional” prior art that is used
to support a section 102 or 103 rejection of the claims with the
section 101 analysis to conclude that because prior art technology
(“conventional” technology) allegedly supports a prior art
rejection of a claim that the claim must be directed to some
abstract idea in and of itself.
These findings from the Answer fail to meet the requirements of
the relevant legal standard set forth in McRo that there must be
“evidence that the process previously used by animators [or
conventional mental processes in the relevant field] is the same
as the process required by the claims.” McRo at 1314. The
evidence proffered in the Answer that relies on the technological
solutions of various prior art references to supposedly teach
“conventional” mental processes clearly fail to meet this
standard, even if the prior art actually did support a section 102
or 103 rejection of the claims (and the prior art does not).
Id. at 6.
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We find Appellants’ arguments unavailing. To whatever extent
Appellants argue that the claims at issue include “specific rules [that] allow
for a computerized system to generate sub-event summaries in an automated
manner that is clearly not equivalent to prior-art conventional human
activity,” we find no such rules. Id. News clipping services, for example,
are well-known to have summarized news events—from multiple
perspectives even—“with reference to a time distribution of messages and
content distribution of messages,” as the claims recite. Appellants have not
provided sufficient persuasive argument to convince us that the claims
distinguish over conducting prior-art conventional human activity with a
computer.
Accordingly, we agree with and adopt the Examiner’s findings that
claims 1—18 are patent-ineligible and the Examiner’s response to Appellants’
arguments, which Appellants do not persuasively rebut. Final Act. 10-12;
App. Br. 8—18; Ans. 2—16; Reply Br. 2—9.
Section 102 and 103 Rejections
Appellants argue the anticipation rejection of claims 1,4, 10, and 13
based on arguments presented with respect to claim 1 and argue the
anticipation rejection of claims 2, 3, 11, and 12 based on arguments
presented with respect to claim 2. App. Br. 19-28. Appellants argue the
obviousness rejections of claims 5—9 and 14—18 on the basis that Rose,
Chua, and/or Chen fail to make up for the deficiencies of Bendel as to claims
1 and 2. Id. at 29. Accordingly, our decision with respect to the art
rejections of claims 1—18 depends on our analysis of Appellants’ arguments
with respect to the deficiencies of Bendel as to claims 1 and 2.
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We have reviewed the Examiner’s rejection of claims 1 and 2 in light
of Appellants’ arguments in the Briefs and the Examiner’s response to
Appellants’ arguments. Final Act. 13—16, App. Br. 19-28, Ans. 16—29,
Reply Br. 9-15. We are unpersuaded by Appellants’ contentions for the
reasons stated by the Examiner, which Appellants do not persuasively rebut.
Ans. 16—19, Reply Br. 9—15. We adopt the Examiner’s findings and
conclusions that claims 1—18 are unpatentable. Final Act. 13—27. We
provide the following for emphasis.
Appellants contend the Examiner “conflate[s] the teachings of Bendel
for the generation of an output message 60' based on an individual input
message 60 with the limitations of the pending claims” and “ignore[s] a
proper[] analysis of the specific limitations of the claims by alleging that the
generation of a ‘numerical value’ ranking in Bendel teaches both the
generation of message streams and the identification of sub-events as
required by the claims.” Reply Br. 9-10; see App. Br. 19-28, Reply Br. 10-
15.
With respect Appellants’ former contention, Appellants elaborate:
there is absolutely no teaching or suggestion for any of the
limitations of the claims that require the generation of the first
message stream that includes only a portion of the plurality of
messages corresponding to a first participant in the event. Even
if the message analyzer 30 in Bendel receives more than one
input message 60 and potentially generates more than one output
message 60', these teachings only imply that Bendel processes
individual messages and, based on the contents of individual
messages, generates output messages 60' that each correspond to
one input message 60, which is clearly not a sufficient factual
foundation to support a section 102 rejection of the claims.
Reply Br. 11. We disagree with Appellants’ conclusion that the Examiner
has not established a sufficient factual basis.
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We first note that Bendel’s message analyzer does, in fact, receive
multiple input messages. Bendel describes that “[mjessage analyzer 30
receives messages 60 from data sources 40 and analyzes messages 60
[and] . . . generates message 60' based on the analysis of messages 60 and
transmits message 60' to client 20.” Bendel 116. To whatever extent
Appellants argue claim 1 ’s “first message stream that includes only a portion
of the plurality of messages corresponding to a first participant in the event”
requires the first message stream to include “more than one output message
60',” we disagree. Reply Br. 11. “[OJnly a portion of the plurality of
messages” does not preclude only a single message in the portion. Thus,
Appellants’ argument is not commensurate with the scope of the claim.
Further, claim 2’s generation of “a second message stream that includes only
a portion of the plurality of messages corresponding to a second participant
in the event” corresponds to a different stream of “messages 60,” and
therefore, a different “message 60'” based on the input stream. Accordingly,
Appellants’ arguments are unpersuasive.
As to Appellants’ allegation of error because Bendel’s “generation of
a ‘numerical value’ ranking [cannot teach] both the generation of message
streams and the identification of sub-events as required by the claims,” we
disagree. Reply Br. 10. Bendel’s numerical values identify the sub-events,
which are then included in the sub-event summary. See, e.g., ^fl[ 66—68. To
whatever extent Appellants argue the claim requires different sub-events in
the sub-event summary than those identified, we are unpersuaded of error
because Appellants again argue beyond the scope of the claim.
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In view of the foregoing, we are unpersuaded of error in the
Examiner’s decision to reject claims 1—18 as anticipated or obvious over the
cited art. Final Act. 13—27.
DECISION
We sustain the Examiner’s decision rejecting claims 1—18 under
35 U.S.C. § 101 and of claims 1—18 under 35 U.S.C. §§ 102 and 103.
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.
§ 41.50(f).
AFFIRMED
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