Ex Parte Myslinski

Patent Trial and Appeal Board

Apr 30, 2018

13763837 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/763,837 02/11/2013 Lucas J. Myslinski
106752 7590 05/02/2018
Hickman Palermo Becker Bingham /Linkedln/Microsoft
1 Almaden Boulevard, Floor 12
San Jose, CA 95113
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.
60352-0040 1793
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCAS J. MYSLINSKI 1
Appeal2017-001329
Application 13/763,837
Technology Center 3600
Before CARLA M. KRIVAK, JON M. JURGOV AN, and
NABEEL U. KHAN, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Linkedin Corporation of
Mountain View, CA.
Appeal2017-001329
Application 13/763,837
STATEMENT OF THE CASE
Appellant's invention is directed to "the field of automatically
verifying the factual correctness of a statement" (Spec. 1: 19--21 ).
Particularly, the invention teaches a "fact checking system verifies the
correctness of information and/or characterizes the information by
comparing the information with one or more sources. The fact checking
system automatically monitors, processes, fact checks information and
indicates a status of the information" (Spec. 2:2-5).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A method programmed in a non-transitory memory of
a first system, the method comprising:
classifying a first source in a classification of a plurality
of possible classifications;
converting at least a first portion of information of the
first source to a particular first portion, wherein converting
comprises converting voice data to text, screen text to usable
text, or graphics to a usable form of data;
performing a comparison between the particular first
portion and information from one or more second sources;
computing a reliability rating of the first source based on
the classification of the first source and the comparison of the
particular first portion with the one or more second sources,
wherein the reliability rating is used for fact checking target
information;
receiving, from a second device that is not included in the
first system, the target information;
based on the reliability rating of the first source,
performing a fact check of the target information received from
the second device.
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REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to non-statutory subject matter (Final Act. 3; Ans. 3)
ANALYSIS
Appellant contends the Examiner errs in finding claims are directed to
an abstract idea and do not include additional elements that add significantly
more (App. Br. 2-19). Particularly, Appellant contends the Examiner has
not provided analysis for the "four burdens" in the US PTO' s Updated
Guidelines issued on July 2015 (App. Br. 4--10). Appellant also contends
the additional elements recited in the claims are not generic and amount to
significantly more (App. Br. 11-17). Appellant further asserts because the
Examiner has stated the claims are not obvious under a 103 rejection thelOl
non-statutory subject matter rejection is erroneous (App. Br. 17-18).
Appellant believes that by virtue of their claims "qualify[ing] for the
streamlined analysis" "is evidence that the 101 rejection under the full
analysis is erroneous" and the Guidelines "make it clear that qualifying for
the streamlined analysis is all this needed to establish patent eligibility"
(App. Br. 19-20). We do not agree with Appellant's contentions and
assertions.
The Examiner identifies Appellant's invention as "the abstract idea of
performing a fact check of information on a computer" and is "nothing more
than requiring a generic computer system (e.g. a processor, memory) to
merely carry out the abstract idea" (Final Act. 2).
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Application 13/763,837
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt "the basic tools of scientific and technological
work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty. v.
CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014). The rationale is that patents
directed to basic building blocks of technology would not "promote the
progress of science" under the U.S. Constitution, Article I, Section 8, Clause
8, but instead would impede it. Accordingly, laws of nature, natural
phenomena, and abstract ideas are not patent-eligible subject matter. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 134
S. Ct. at 2354).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice. 134 S. Ct. at 2355. The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76-77). If so, then the eligibility analysis proceeds to the
second step of the Alice/ Mayo test in which we "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, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79). The "inventive
concept" may be embodied in one or more of the individual claim
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Application 13/763,837
limitations or in the ordered combination of the limitations. Alice, 134 S. Ct.
at 2355. The "inventive concept" must be significantly more than the
abstract idea itself, and cannot be simply an instruction to implement or
apply the abstract idea on a computer. Alice, 134 S. Ct. at 2358. "'[W]ell-
understood, routine, [and] conventional activit[ies]' previously known to the
industry" are insufficient to transform an abstract idea into patent-eligible
subject matter. Alice, 134 S. Ct. at 2359 (citing Mayo, 566 U.S. at 73).
Initially we note Appellant does not address the Alice/Mayo test, but
rather argues the USPTO Updated Guidelines "with the understanding that
the arguments are ultimately based on the case law upon which those
Updated Guidelines have been construed" (App. Br. 4--5).
Appellant contends the Examiner has not identified "performing a fact
check of information" as a concept the courts have identified as an "abstract
idea" without any evidence (App. Br. 5---6). Appellant is incorrect in their
interpretation of the Guidelines requiring only those cases listed to cover all
abstract ideas. The Guidelines state "The following examples should be
used in conjunction with the 2014 Interim Eligibility Guidance. As the
examples are intended to be illustrative only, they should be interpreted
based on the fact patterns set forth below. Other fact patterns may have
different eligibility outcomes" (emphasis added). Thus, the Guidelines
merely provide guidance and set forth examples of what could be patent
ineligible. In the present case, performing a fact check can be done in the
human mind using pen and paper. As the Federal Circuit has concluded, "a
process defined simply as using a computer to perform a series of mental
steps that people, aware of each step, can and regularly do perform in their
heads" is considered an abstract idea. SmartGene, Inc. v. Advanced
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Application 13/763,837
Biological Laboratories, SA, 555 F. App'x 950, 954 (Fed. Cir. 2014)
(unpublished) (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011) ("Such a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101")).
Therefore, we agree with the Examiner that the claims are directed to
fact checking information on a computer, which is an abstract idea
(Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016) ("we continue to treat analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category") (quotation
omitted); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed.
Cir. 2016) ("Merely requiring the selection and manipulation of
information- to provide a 'humanly comprehensible' amount of
information useful for users-by itself does not transform the otherwise-
abstract processes of information collection and analysis.") (Citation
omitted); see also, OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
13 63 (Fed. Cir. 2015) ("relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible")).
As to the additional elements, we also agree with the Examiner
finding the claims do not recite anything more than a generic computer
performing generic steps of converting information to usable data,
comparing the information to other information, and determining a rating, a
reliability rating in this instance, based on the comparison (Ans. 3--4).
Appellant merely states these additional steps provide significantly more
without stating what the significantly more is (App. Br. 7-9). Appellant also
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contends the Examiner has not identified the additional elements (App. Br.
9); however, the Examiner has stated they are the steps other than
performing fact checking information (Final Act. 2; Ans. 4--5).
As to Appellants' arguments that significantly more does not mean
claimed actions are beyond the capabilities of existing hardware; rather, the
claimed limitations, using off the shelf hardware, perform actions under
program control that are inventive, we agree (App. Br. 14--15) (see Diamond
v. Diehr 450 U.S. 175, (1981) and DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014)). However, Appellant has not shown how
their claim limitations perform inventive actions/functions on a non-generic
computer or how the claim limitations are unconventional (App. Br. 15-17).
We also do not agree with Appellant's argument that an abstract idea
transforms into an inventive concept just because the Examiner has not cited
prior art that discloses or suggests it (App. Br. 17-18). Indeed, "[t]he
'novelty' of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter" (Diamond
v. Diehr at 188-89; see also Mayo at 90). Therefore, even as to claims that
the Examiner concludes are allowable over the art of record, such novelty
would not persuade us that the claims are patent eligible under
§ 101.
Lastly, Appellant appears to believe their claims qualify for a
"streamlined analysis" (App. Br. 18-19). Appellant states, to qualify, the
claims must not currently be practiced by others and cannot continue to be
practiced by others even if Appellant's claims were issued (App. Br. 19).
Appellant then asserts because the Examiner has stated fact checking
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information is practiced by others and could continue to be practiced by
others even if the claims are issued, "it logically flows that the present
claims do not tie up 'performing a fact check of information' to the degree
others could not practice it" (id.). Appellant recites the Guidelines: "the
result of employing the streamlined analysis is a conclusion that the claim
is eligible" (App. Br. 20). Appellant then concludes "it is directly contrary
to the updated Guidelines to conclude, based on a full analysis, that an
invention that qualifies for the streamlined analysis is patent ineligible" (id.).
We do not agree. Appellant's argument is not persuasive because although
"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).
We are instructed that "[ w ]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the [Alice/Mayo] framework .
. . , preemption concerns are fully addressed and made moot" (id.). Thus,
contrary to Appellant's inference that because fact checking information is
currently practiced by others and could continue to be practiced by others
even if the claims are issued, does not mean the claims "tie up" this
limitation (App. Br. 19); the Examiner merely refers to the abstract idea
being performed by a routine, conventional, generic computer and
technological environment (see Final Act. 2-3).
Appellant provides further attorney argument in their Reply Brief,
which we do not consider as it could have been presented in the Appeal
Brief. Specifically, Appellant has not made a showing of good cause why
the argument should be considered at this time when the Examiner has not
had an opportunity to consider and respond to it (37 C.F.R. § 41.41(b)(2)).
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Even if we were to consider these arguments, Appellant's statements that the
invention is not directed to a business method patent and the additional steps
do not refer to/involve generic computer components, are unpersuasive
(Reply Br. 3--4). Appellant's Specification states a generic computer
performs these steps/claim limitations (see Spec. 22:23-24 "The memory
404 is able to be any conventional computer memory known in the art,"
(emphasis added)). Further, Appellant's list of what is "significantly more"
is merely a list (Reply Br. 4--5). Appellant has not stated anywhere in their
briefs or explained what steps in their claimed invention are not routine and
conventional or are meaningful beyond generally linking the use to a
particular technology (Reply Br. 5).
In light of the fact that Appellant has mostly recited what the
Guidelines state and has not shown how their claims are statutory in
response to the Examiner's findings and determinations of patent
ineligibility under § 101. "The arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant" (37 C.F.R.
§ 41.37(c)(l)(iv)). As Appellant has not explained why, we sustain the
Examiner's rejection of claims 1-20, argued together (App. Br. 4).
DECISION
The Examiner's decision rejecting claims 1-20 as being patent
ineligible 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)(l )(iv).
AFFIRMED
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