Ex Parte McClellan

Patent Trial and Appeal Board

Aug 21, 2018

13099689 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/099,689 05/03/2011 Catherine McClellan
20583 7590 08/22/2018
Jones Day
250 Vesey Street
New York, NY 10281-1047
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.
011948-0164-999 1381
EXAMINER
HULL, JAMES B
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
08/22/2018 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 CATHERINE McCLELLAN
Appeal2017-008058
Application 13/099,689
Technology Center 3700
Before: CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1--4, 9-15, and 20-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the Real Party in Interest in this appeal is
Educational Testing Services of Princeton, New Jersey.
Appeal2017-008058
Application 13/099,689
CLAIMED SUBJECT MATTER
The claims are directed to computer-implemented systems and
methods for distributing constructed responses to scorers. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method of distributing constructed
responses to scorers, comprising:
generating a constructed response scoring plan, wherein
the scoring plan includes distributing a plurality of constructed
responses to scorers positioned at disparate locations from a
central server to which the scorers are connected via a network
for scoring, wherein a scoring effectiveness metric is calculated
for the scoring plan;
identifying one or more undesirable statistical aspects that
have a negative effect on the scoring effectiveness metric;
receiving a plurality of distribution rules for reducing the
effect of the one or more undesirable statistical aspects on the
scoring effectiveness metric with a computer processing system,
wherein the rules include a queue population rule, a response
distribution rule and an undue influence rule, and wherein the
distribution rules are associated with corresponding priority
levels, the priority levels including a level that permits an
associated distribution rule to be temporarily relaxed;
populating a constructed response queue for a particular
scorer and additional constructed response queues for other
scorers with the computer processing system based on the queue
population rule, wherein a constructed response in a response
pool is not added to the constructed response queue if having the
particular scorer score said constructed response in the pool
would violate the queue population rule;
evaluating a constructed response that has already been
assigned to the response queue for the particular scorer from the
front of the constructed response queue for the particular scorer
with the computer processing system based on the response
distribution rule and based on the undue influence rule, wherein
the undue influence rule determines whether the particular scorer
is permitted to score a constructed response in the constructed
response queue based on an identity of a second particular scorer
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Application 13/099,689
to whom said constructed response in the constructed response
queue has already been allocated and a comparison of a non-
scoring-based demographic metric of the particular scorer and
the second particular scorer, wherein said constructed response
from the constructed response queue for the particular scorer is
not provided to the particular scorer if having the particular
scorer score said constructed response in the constructed
response queue for the particular scorer would violate the
response distribution rule and the undue influence rule, wherein
the particular scorer is provided a different constructed response
from the constructed response queue for scoring if having the
particular scorer score said constructed response would violate
the response distribution rule and the undue influence rule;
determining whether a constructed response in the
constructed response queue is unallocated, once allocated, or
twice allocated; and
providing said constructed response from the constructed
response queue to a remote graphical user interface of the
particular scorer for scoring if having the particular scorer score
said constructed response in the constructed response queue for
the particular scorer would not violate the response distribution
rule and the undue influence rule and the constructed response is
unallocated or once allocated;
wherein the undue influence rule prevents providing the
constructed response to the particular scorer in response to a
number of times, that the particular scorer and the second
particular scorer have scored constructed responses as a scorer
pair, exceeding a threshold; and
wherein the queue population rule prevents the particular
scorer from being assigned a constructive response from a
respondent if both the particular scorer and the respondent have
a college education or both the particular scorer and the
respondent lack a college education.
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Application 13/099,689
REJECTION
Claims 1--4, 9--15, and 20-22 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
ANALYSIS
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court identified a two-step framework for determining
whether claimed subject matter is judicially excepted from patent eligibility
under 35 U.S.C. § 101. According to the first step of this analysis, "[w]e
must first determine whether the claims at issue are directed to a patent-
ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at 2355. If
the claims are directed to an abstract idea, the second step includes
determining whether the claims include 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. at
2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1294 (2012)).
In rejecting the claims under 35 U.S.C. § 101, the Examiner applies
this two-step framework. Non-Final Act. 2-3. Pursuant to the first step, the
Examiner determines the claims are directed to the abstract idea of "a
system of distribution utilizing a set of rules ... to distribute constructed
responses to a group of scorers in order to reduce a negative statistical
aspect." Non-Final Act. 2. The Examiner also finds the claims are "akin to
organizing human activity." Id. Under the second step, the Examiner
determines:
[T]he claims recite generic computer components . . . recited at
a high level of generality for performing their basic functions
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Application 13/099,689
[which] amounts to mere instructions to implement the abstract
idea on a computer. Thus, the recited computer constructs
simply limit the claimed abstract idea to a particular
technological environment, not significantly more than an
abstract idea.
Id. at 3.
Regarding the first step of Alice, Appellant argues the claims are not
directed to an abstract idea because: (i) the claims are not directed to
organizing human activity (Appeal Br. 11 ); (ii) the claims do not preempt all
processes for performing the alleged abstract idea (id. at 14); and (iii) the
claims provide a specific implementation of a solution for a problem within
the software arts. Id. at 19. We address each of these arguments in tum.
As to (i), Appellant cites Alice, Bilski, 2 and Planet Bingo3-all of
which, Appellant concedes, involved claims directed to the abstract idea of
"organizing human activity"-and describes the inventions of each as being
directed to "managing activity performed by humans." Appeal Br. 12.
(emphasis added). Thus, Appellant's position appears to be that the claimed
invention is not directed to an abstract idea because the "activity" of the
claimed invention is not one that is "performed by humans." Id. As to what
the "activity" of the claimed invention is, Appellant argues: "the pending
claims are directed towards the analyzing and distribution of constructed
responses to scorers in an online, networked scoring system." Id. at 14.
( emphasis added). Thus, Appellant contends the claimed invention does not
constitute a method of organizing human activity because a computer is
used to analyze and distribute the responses to the scorers. We disagree.
2 In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), aff'd Bilski v. Kappas, 561 U.S.
593 (2010).
3 Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)
( non-precedential).
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Application 13/099,689
Two of the cases Appellant cites included claims that specifically
required computer-implementation, but were nevertheless found to involve
"organizing human activity," and deemed directed to abstract ideas. In
Alice, the risk-management method was directed to "a computer-
implemented scheme for mitigating settlement risk." Alice, 134 S. Ct. at
2351-52 (emphasis added) (internal quotation omitted)). Similarly, Planet
Bingo involved claims directed to "computer-aided methods and systems for
managing the game of bingo." Planet Bingo, 576 Fed. Appx. at 1005
(emphasis added). Thus, the mere fact that Appellant's invention is
computer-implemented does not, in and of itself, preclude it from being
directed to an abstract idea. Accordingly, we see no reason why the claimed
invention's use of a computer, merely to distribute responses and apply
rules, would move the invention outside of the realm of abstract ideas. See
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (US.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) ("[T]he use of a computer in an otherwise
patent-ineligible process for no more than its most basic function-making
calculations or computations-fails to circumvent the prohibition against
patenting abstract ideas and mental processes.").
As to (ii), Appellant argues the claims are patent eligible because they do
not preempt all processes for performing the alleged abstract idea. (Appeal
Br. 14--18). However, "[ w ]hile 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). In this case, the claimed invention includes
methods which employ any conceivable "undesirable statistical aspects that
have a negative effect on the scoring effectiveness metric" as well as
"distribution rules for reducing the effect of the one or more undesirable
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statistical aspects on the scoring effectiveness metric," including "a queue
population rule," "a response distribution rule," and an "undue influence
rule." Appeal Br. 28. With such broad, sweeping limitations, the claimed
invention covers both subject matter already known, subject matter
discovered or conceived by Appellant, and subject matter yet to be
discovered or conceived. Claim scope of this nature is precisely the type
that raises preemption concerns: it "forecloses more future invention than
the underlying [invention or] discovery could reasonably justify." Mayo
Collaborative Servs., 132 S. Ct. at 1301-2.
As to (iii), Appellant cites Enfzsh, LLC. v. Microsoft Corp., 822 F. 3d
1327, 1339 (Fed. Cir. 2016), and argues "Enfzsh supports the idea that
comparing new and stored information and using rules to identify options in
how to distribute the constructed responses to scorers based on rules could
be viewed as a 'specific implementation of a solution to a problem in the
software arts."' Appeal Br. 19 ( emphasis omitted). We disagree.
In determining whether claims are directed to excluded subject matter,
e.g., an abstract idea, under the first step of the Alice analysis, the Federal
Circuit has explained that "the 'directed to' inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether 'their
character as a whole is directed to excluded subject matter."' Enfzsh, 822
F.3d at 1335 (quoting Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015)). For computer-implemented inventions in
particular, such as the present invention, "the first step in the Alice inquiry ..
. asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Id. at 1335-36.
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Here, independent claim 1 recites the steps of: identifying one or more
undesirable statistical aspects that negatively impact the effectiveness of
scoring constructed responses; receiving a plurality of distribution rules for
reducing the effect of the undesirable statistical aspects; populating queues
with constructed responses to be scored, wherein the constructed responses
are added to the queues according to one or more of the distribution rules;
evaluating the constructed response at the front of each queue based one or
more other of the distribution rules; and providing ( or not providing) a
particular constructed response to a particular given scorer based on the one
or more other of the distribution rules. Appeal Br. 28-29; Spec. Abstract.
As such, the claimed steps result in: queues of responses that are distributed
to scorers, whereby the population of the queues, and the distribution to the
scorers, are based on one or more distribution rules.
The method of claim 1 is "computer-implemented," and recites
computing components, such as a "central server", a "network", and a
"computer processing system." Id. at 28. However, the Specification does
not describe any improvement to the computing components. Rather, the
Specification explains that the invention relates to "distributing constructed
responses to scorers to score while reducing an undesirable statistical
metric." Spec. Abstract. According to the Specification, "[t]he cost of ...
distributing large numbers of constructed responses among [] live scorers
makes for an expensive and often inefficient process." Spec. ,r 4.
Moreover, when grading a large number of constructed responses,
"maintaining a high level of scoring quality while [also] ensuring that
scoring biases are prevented" can be difficult, because the grading can
"often involve some scorer judgment." Id. The claimed invention addresses
these problems by using "computer network technology" to distribute
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responses to remote scorers "who may not be centrally located" (Spec. ,r 20),
and by using a processor to perform, e.g., "scoring rules ... to reduce the
effect of bias" (Spec. ,r 31 ).
In light of the above, the claimed invention uses the recited computer
components to perform a series of steps that distribute constructed responses
according to one or more rules. The focus of the claimed invention is,
therefore, not on an improvement in computer capabilities "directed to a
specific implementation of a solution to a problem in the software arts," but
rather to render a decision as to whether a given response will, or will not,
be scored by a given scorer based on one or more rules. The computer-
related recitations are only tangential to this process. Therefore, we agree
with the Examiner's determination that the character of the claims, as a
whole, is directed to the abstract idea of "a system of distribution utilizing a
set of rules ... to distribute constructed responses to a group of scorers in
order to reduce a negative statistical aspect." Non-Final Act. 2.
Seeing no error in the Examiner's determination that the claims are
directed to an abstract idea under the first step of the Alice analysis, we tum
to Appellant's arguments under the second step. Appellant argues the
claims recite significantly more than the abstract idea because "they are
specific enough to preclude the risk of pre-emption and innovative enough
to override the routine and conventional use of the computer." Appeal Br.
24 (internal quotation omitted). Additionally, Appellant argues, the claims
recite an "inventive concept" that ensures the patent in practice amounts to
significantly more than a judicial exception. Id. ( citation omitted). We
disagree.
As stated above, even if the claims do not preempt all uses of the
abstract idea, the absence of complete preemption does not demonstrate
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patent eligibility. Ariosa, 788 F.3d at 1379. Consequently, we find this
argument under the second step of Alice unpersuasive for essentially the
same reasons we found it unpersuasive under the first step. Furthermore, the
claimed invention does not "override the routine and conventional" use of a
computer because the recited computer components are used to perform no
more than their generic functions: a central server and network are used to
allow distribution of responses to remote scorers, and a computer processing
system is used to apply rules to decide whether a given response will, or will
not, be scored by a given scorer. Finally, we are unpersuaded by
Appellant's "inventive concept" argument, primarily because Appellant
does not elaborate on what that concept is. As such, the argument amounts
to no more than a conclusory statement that the claimed invention satisfies
the second step of Alice.
Accordingly, Appellant does not apprise us of error. We affirm the
Examiner's rejection under 35 U.S.C. § 101 as to independent claim 1.
Furthermore, because Appellant argues independent claims 1, 14, and 20
together, and because Appellant presents no separate arguments as to any
dependent claims, we also affirm the Examiner's rejection of claims 2--4, 9-
15, and 20-22.
DECISION
The Examiner's rejection of claims 1--4, 9-15, and 20-22 is
AFFIRMED.
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. §
1.136(a)(l )(iv).
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