Ex Parte Olivier et al

Patent Trial and Appeal Board

Mar 22, 2018

13706162 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/706, 162 12/05/2012 Michael Olivier
45839 7590 03/26/2018
Schwegman Lundberg & Woessner I Linkedln/Microsoft
POBOX2938
MINNEAPOLIS, MN 55402
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.
3080.096US 1 4855
EXAMINER
TORRICO-LOPEZ, ALAN
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL OLIVIER, RACHEL SANDERS, ALEX V AUTREY,
and EV AN BRYNNE
Appeal2016-003982
Application 13/706,162 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-12 and 14--22. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Linkedin Corporation as the real party in interest.
Appeal Br. 2.
Appeal 2016-003982
Application 13/706,162
THE INVENTION
Appellants' claims relate to methods and systems "for providing a
system and method to schedule interviews for job candidates and/or
meetings within a business organization, ... for conducting interviews of
job candidates and/or meetings within a business organization, and ... for
evaluating interviewers of job candidates and/or participants in meetings
within a business organization." Specification i-f 1.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A system comprising:
a computer processor configured to:
receive data relating to a plurality of job
interviews;
store the data in a computer storage device; and
analyze the data relating to the plurality of job
interviews to determine an effectiveness of an
interviewer and an effectiveness of an interview process;
wherein the computer processor is configured to compare
job candidate data for all job candidates who successfully
passed all interviews, all job candidates who were rejected, and
job performance data of the job candidates who were hired.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sack
Neece
Round
Pfenning er
Reynolds
Hartmann '284
Tonnison
us 5,259,766
US 2003/0037032 Al
US 2006/0224442 Al
US 2006/0235884 Al
US 2008/0065471 Al
US 2008/0172284 Al
US 2008/0282160 Al
2
Nov. 9, 1993
Feb.20,2003
Oct. 5, 2006
Oct. 19, 2006
Mar. 13, 2008
July 1 7, 2008
Nov. 13, 2008
Appeal 2016-003982
Application 13/706,162
Dewar
Hartmann '63 5
O'Malley
MacArthur
Sahagun
Younger
Brun
Kolber
US 2010/0042574 Al
US 7,991,635 B2
US 2011/0276507 Al
US 2012/0078803 Al
US 2012/0109837 Al
US 2012/0109838 Al
US 2012/0245924 Al
US 2013/0097093 Al
Feb. 18,2010
Aug. 2, 2011
Nov. 10, 2011
Mar. 29, 2012
May 3, 2012
May 3, 2012
Sept. 27, 2012
Apr. 18, 2013
Charlotte Garvey, The Next Generation of Hiring Metrics, 50 HR
Magazine (April 2005).
The following rejections are before us for review2 :
Claims 1-12 and 14--22 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter.
Claims 1--4 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Dewar, Hartmann '284, and Garvey.
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Dewar, Hartmann '284, Garvey, and MacArthur.
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) over Dewar,
Hartmann '284, Garvey, Tonnison, and Sack.
Claim 8 is rejected under 35 U.S.C. § 103(a) over Dewar, Hartmann
'284, Garvey, Sahagun, and Neece.
Claim 9 is rejected under 35 U.S.C. § 103(a) over Dewar, Hartmann
'284, Garvey, and Brun.
Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) over Dewar,
Hartmann '284, Garvey, Pfenninger, and Round.
2 The Examiner withdrew the rejection of claims 19-22 under 35 U.S.C.
§ 112, first paragraph. (Answer 2).
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Claim 12 is rejected under 35 U.S.C. § 103(a) over Dewar, Hartmann
'284, Garvey, and Pfenninger.
Claims 14, 16, and 17 are rejected under 35 U.S.C. § 103(a) over
Dewar, Hartmann '284, Garvey, Pfenninger, and Reynolds.
Claim 15 is rejected under 35 U.S.C. § 103(a) over Dewar, Hartmann
'284, Garvey, Pfenninger, Reynolds, O'Malley, and Hartmann '635.
Claim 18 is rejected under 35 U.S.C. § 103(a) over Dewar, Hartmann
'284, Garvey, Pfenninger, Reynolds, Younger, and Kolber.
Claims 19-22 are rejected under 35 U.S.C. § 103(a) over Dewar and
Reynolds.
ANALYSIS
35 U.S.C. § 103 REJECTION
Independent claim 1 recites in pertinent part, "configured to compare
job candidate data for all job candidates who successfully passed all
interviews, all job candidates who were rejected, and job performance data
of the job candidates who were hired."
Appellants argue,
Appellant[ s] respectfully submit[] that a general
statement relating to deeper data analysis, whether
jobs are being filled with the right people, and
whether a company is hiring better people, is not a
disclosure of the claimed feature of comparing
data for candidates who were rejected with job
performance data of candidates who were hired.
Moreover, the easy measure of the number of jobs
that a recruiter is filling is not a disclosure of either
data for candidates who were rejected or job
performance data of candidates who were hired.
(Appeal Br. 15).
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The Examiner however found,
Garvey teaches: comparing job candidate data for
all job candidates who successfully passed all
interviews, all job candidates who were rejected
and job performance data of the job candidates
who were hired (Garvey Page 3: HR also puts out
a recruitment effectiveness scorecard, which
Janusz describes as using "a funnel approach"
to data analysis. The report card first looks at
the number of job applicants and whether they
were recommended for an interview, as well as
whether they were actually interviewed or
hired. Then, "we cut that data by diversity and
source," he notes. "We look at how we are
leveraging those sources so we source more
effectively[]"; analyses/compares data involving
job applicants and whether they were
recommended for interview (rejected or not
rejected) as well as those who were interviewed
and hired. Page 4: ....
(Final Act. 7).
We agree with Appellants. We do not agree with the Examiner's
finding that Garvey meets the claimed "compar[ing] job candidate data for
all job candidates who successfully passed all interviews, all job candidates
who were rejected, and job performance data of the job candidates who were
hired." What Garvey discloses is "[t]he report card first looks at the number
of job applicants and whether they were recommended for an interview, as
well as whether they were actually interviewed or hired." Garvey p. 3.
Garvey does not compare this data but rather uses it to create a "score card."
According to Garvey, this data is cut by "diversity and source" to arrive at
the score card. Id. 3. It is not apparent and the Examiner does not explain
how this data manipulation equates to the claimed comparing step.
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Because claims 2-12 and 14--18 depend from claim 1, and inasmuch
as we cannot sustain the rejection of claim 1, the rejection of claims 2-12,
and 14--18, likewise, cannot be sustained.
Independent claim 19 recites in pertinent part, "analyze the data
relating to the one or more meetings to determine one or more of an
effectiveness of the one or more meetings and an effectiveness of a meeting
participant."
Concerning this limitation, the Examiner found Dewar discloses
data may indicate the employer's rating of the
employee's actual job performance. Such a
rating can be cross-checked against the answers
that the employee gave during the application
process. The cross-checking can be used as
feedback to refine the questions and evaluation
criteria used at each stage of the hiring process.
[O 108] Employee performance evaluation 406
measures actual job performance of the
applicant or incumbent after holding the job for
a period of time. This information is fed back
to test design 402 and/or test administration
404. Test design 402 may be revised to delete
questions which were not predictive of
successful job performance. This can be done
for example by deleting questions whose
answers bore no relation to performance
evaluation 406 for a statistically valid sample).
(Final Act. 33).
Appellants argue,
no reference cited by the Final Office Action
discloses determining the effectiveness of a non-
interview meeting. Moreover, claim 19 would not
have been obvious over Dewar and a reference that
discloses a simple non-interview meeting (such as
Reynolds) because there is no teaching or
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suggestion to make such a modification. This is
not surprising, because the purpose of an interview
is to evaluate a job candidate and determine
whether that candidate should be hired or not. The
purpose of a non-interview meeting is not to
evaluate any particular person, but to make
business decisions. And while it may be
commonplace to later evaluate the effectiveness of
those business decisions, Appellant[ s] respectfully
submit[] that the prior art does not teach, either
alone or in combination, the evaluation of the
business meeting that was used to arrive at such
decisions.
(Appeal Br. 16-17).
We agree with Appellants because although the cited sections of
Dewar do disclose evaluating a meeting participant (the employee being
tested) the cited sections of Dewar do not disclose meetings, let alone
determining the effectiveness of the one or more meetings. Independent
claim 19 defines a meeting as "meetings among persons employed at a same
business organization." Dewar discloses statistical evaluations in a process
of test design 402, without mention of a meeting and/or a resultant
determination of the effectiveness of the meeting. See Dewar i-f 108 ("Test
administration 404 tests and scores job applicants and/or incumbents.").
Appellants argue and we agree that "[t]he purpose of a non-interview
meeting is not to evaluate any particular person, but to make business
decisions." (Appeal Br. 17). It is not apparent and the Examiner does not
make it clear how test designing and administration is an obvious variant of
meeting evaluations.
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Given that claims 20-22 depend from claim 19, and because we
cannot sustain the rejection of claim 19, the rejection of claims 20-22,
likewise, cannot be sustained.
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-12 and 14--22 under
35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat
else is there in the claims before us?" To answer that
question ... 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. [The Court] described
step two of this analysis 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."
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72-73 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case's claims themselves and the
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Specification provide enough information to inform one as to what they are
directed.
The steps in claim 1 result in "compar[ing] job candidate data for all
job candidates who successfully passed all interviews, all job candidates
who were rejected, and job performance data of the job candidates who were
hired" to effect, determin[ing] an effectiveness of an interviewer and an
effectiveness of an interview process. The steps in independent claim 19
result in, "determin[ing] one or more of an effectiveness of the one or more
meetings and an effectiveness of a meeting participant."
The Specification further states,
Many business organizations today, especially
large corporations, struggle with the interviewing
and hiring of job candidates. The interviewing and
hiring processes are difficult, time consuming,
non-automated, and many times do not result in
the hiring of a candidate who will be a productive
employee. As many a business manager or human
resources person knows, a bad hire can be a real
headache.
Specification Jr 2.
The Specification also describes,
[a] process to schedule a meeting and select people
to invite to the meeting. At 2505, the system stores
in a database data relating to a plurality of persons.
The plurality of persons is normally employed at
the same business organization, but the plurality
can also be spread across more than one business
organization or not be associated with a business
organization at all.
Specification i-f 32.
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Thus, all this evidence shows that claims 1 and 19 are directed to evaluating
the effectiveness of employee candidate interview and meeting processes,
respectively. It follows from prior Supreme Court cases, and Gottschalk v.
Benson, 409 U.S. 63 (1972) in particular, that the claims at issue here are
directed to an abstract idea. Evaluating the effectiveness of employee
candidate interview and meeting processes are methods of organizing human
behavior, which is not patent-eligible subject matter. See Alice Corp. Pty.
Ltd., 134 S. Ct. at 2355-56. Also, we find the steps of receiving data,
storing data, comparing data and analyzing data, constitute physical acts by a
human and/or "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." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). See also buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (holding that claims directed
to certain arrangements involving contractual relations are directed to
abstract ideas). Thus, evaluating the effectiveness of employee candidate
interview and meeting processes are "abstract ideas" beyond the scope of
§ 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of evaluating the effectiveness of employee candidate interview and meeting
processes, at issue here. Both are squarely within the realm of "abstract
ideas" as the Court has used that term. That the claims do not preempt all
forms of the abstraction or may be limited to hiring interviews and meetings,
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does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[ t ]" an abstract idea
"on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a user
amounts to electronic data query and retrieval-some of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
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industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants' claims simply
recite the concept of evaluating the effectiveness of employee candidate
interview and meeting processes. The claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than instructions to evaluate
the effectiveness of employee candidate interview and meeting processes.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art."'
Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original) (citations
omitted).
We have reviewed all the arguments (Appeal Br. 9-14) Appellants
have submitted concerning the patent eligibility of the claims before us
which stand rejected under 35 U.S.C. § 101. We find that our analysis
above substantially covers the substance of all the arguments which have
been made. But for purposes of completeness, we will address various
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arguments in order to make individual rebuttals of same.
Appellants argue, "the Office Action has not come forth with any
evidence to support its contention that [] the claims do not amount to
significantly more than an abstract idea." (Appeal Br. 10).
We disagree with Appellants. The notice requirement of 35 U.S.C.
§ 13 2 itself instructs, the examiner must "notify the applicant," "stating the
reasons for such rejection," "together with such information and references
as may be useful in judging of the propriety of continuing the prosecution of
his application." Here, the Examiner has done exactly that, stating that
"[c]laims 1-12 and 14--22 are rejected under 35 U.S.C. [§] 101 because
the ... claim( s) is/ are directed to the abstract idea of meeting/interview
evaluation." (Final Act. 3).
Appellants argue,
Appellant[ s] respectfully submit[] that these
specifically recited functions are more than a
simple abstract idea. Rather, these functions have
a concrete impact on the real world, such as being
able to identify interviewers who have been
successful in identifying persons who have turned
out to be effective employees.
(Appeal Br. 11 ).
We disagree with Appellants because the question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)
(citations omitted). In this case, claim 1 as a whole is focused on comparing
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job candidate data, and claim 19 is focused on determining the effectiveness
of one or more meeting.
Appellants further argue, "there are no prior systems that evaluate the
effectiveness of an interviewer to identify candidates who tum out to be
effective employees using the data comparison steps of Appellants' claims.
Hence, the evaluation of interviewers in the prior art was either inadequate
or non-existent." (Appeal Br. 13).
We disagree with Appellants. The question in step two of the Alice
framework is not whether an additional feature is novel but whether the
implementation of the abstract idea involves "more than [the] performance
of 'well-understood, routine, [and] conventional activities previously known
to the industry."' Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice
Corp. Pty. Ltd., 134 S. Ct. at 2359). Other than the recited processor and
storage, the remainder of the claim elements are based on human
thought/activity which is not eligible subject matter under 35 U.S.C. § 101. 3
"Adding one abstract idea ... to another abstract idea ... does not render the
claim non-abstract." RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d
1322, 1327 (Fed. Cir. 2017).
3 Section 101 of Title 35 U.S.C. sets out the subject matter that can be
patented: "Whoever 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."
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CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1-12 and 14--22
under 35 U.S.C. § 103(a).
We conclude the Examiner did not err in rejecting claims 1-12 and
14--22 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-12 and 14--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).
AFFIRMED
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