Ex Parte Popat et al

Patent Trials and Appeals Board

May 20, 2019

14489803 - (D) (P.T.A.B. May. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/489,803 09/18/2014
75739 7590 05/22/2019
RYAN, MASON & LEWIS, LLP
2425 Post Road
Suite 204
Southport, CT 06890
FIRST NAMED INVENTOR
Kashyap Popat
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.
IN9201401 l 9US 1 1026
EXAMINER
SAINT-VIL, EDDY
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
05/22/2019 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):
CTOFFICE@RML-LA W.COM
kmm@rml-law.com
mjc@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte KASHYAP POPAT, NIDHI RAJSHREE,
BIKRAM SENGUPTA, and ASHA Y T AMHANE 1
Appeal2018-006352
Application 14/489,803
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's final
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 The Appeal Brief indicates that International Business Machines
Corporation, Appellant, is the real party in interest. Appeal Br. 1.
Appeal2018-006352
Application 14/489,803
CLAIMED SUBJECT MATTER
The claims are directed to a method of recommending a set of
learning activities based on dynamic learning goal adaptation. Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method comprising the steps of:
determining an initial set of multiple learning goals for a
given student based on at least (i) an existing knowledge state of
the given student and (ii) one or more identified interests of the
given student;
calculating a probability value of the given student
succeeding in each of the multiple learning goals in the initial set,
wherein said calculating is based on at least (i) the existing
knowledge state of the given student and (ii) historical data
pertaining to multiple additional students;
selecting one or more learning goals from the initial set for
the given student based on at least (i) the existing knowledge
state of the given student, (ii) a determined learning style
associated with the given student, (iii) historical data pertaining
to the multiple additional students, (iv) the probability value of
the given student succeeding in each of the multiple learning
goals in the initial set and (v) an exploration threshold associated
with the given student, wherein the exploration threshold
represents a measure of autonomy for academic investigation
afforded to the given student at a given time;
outputting a first recommendation comprising a first
sequence of multiple learning activities corresponding to said
one or more selected learning goals;
monitoring performance of the given student over the
sequence of multiple learning activities;
updating (i) the existing knowledge state of the given
student, (ii) the determined learning style associated with the
given student, (iii) the one or more identified interests of the
given student, and (iv) the exploration threshold associated with
the given student based on said monitoring;
using the updated (i) knowledge state of the given student,
(ii) learning style associated with the given student, (iii) one or
more identified interests of the given student, and (iv)
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Application 14/489,803
exploration threshold associated with the given student to modify
the one or more selected learning goals for the given student; and
outputting a second recommendation comprising a second
sequence of multiple learning activities corresponding to said
one or more modified learning goals;
wherein the steps are carried out by at least one computing
device.
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without significantly more.
OPINION
Claims 1, 2, 5-11, and 14-16
Aside from arguments in support of claims 3, 4, 12, 13, and 17,
Appellant makes arguments for the patent eligibility of claims 1-20 as a
group. See Appeal Br. 9-15. We select claim 1 as the representative claim,
and claims 2, 5-11, and 14--16 stand or fall with claim 1. See 37 C.F.R. §
4I.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
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and Alice. See Alice, 573 U.S. at 217-18 ( citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed to."
Id. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 679 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n. 7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must 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, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
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Application 14/489,803
monopolize the [ abstract idea]."' Id. ( ( alteration in the original) quoting
Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer
implementation[] fail[ s] to transform that abstract idea into a patent-eligible
invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum"). Under Step
2A of 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 MPEP2 § 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, in Step 2B, 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.
2 Manual of Patent Examining Procedure.
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Step 1 - Statutory Category
Claim 1 recites a series of steps, and, therefore, is a process. See
Appeal Br. 19 (Claims App.).
Step 2A, Prong 1 - Recitation of Judicial Exception
In determining that claim 1 is directed to a judicial exception to patent
eligibility, without significantly more, the Examiner takes the position that
these claims are similar to the claims held ineligible in CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011),
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), and
in SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F.App'x 950 (Fed.
Cir. 2014). Final Act. 3. Thus, the Examiner implicitly determines that
these claims are directed to a mental process, for example, the process of
"comparing new and stored information and using rules to identify options."
Id. ( emphasis omitted).
Appellant asserts that the Examiner erred by failing to consider "the
collection of specific claim limitations as a whole." Appeal Br. 10.
Appellant, citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016) andMcRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016), contends that the Examiner oversimplified the claims when
determining that they are directed to an abstract idea. See Appeal Br. 9-11.
As recited in claim 1, the method includes the steps of
determining an initial set of multiple learning goals for a
given student based on at least (i) an existing knowledge state of
the given student and (ii) one or more identified interests of the
given student;
calculating a probability value of the given student
succeeding in each of the multiple learning goals in the initial set,
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Application 14/489,803
wherein said calculating is based on at least (i) the existing
knowledge state of the given student and (ii) historical data
pertaining to multiple additional students.
Appeal Br. 19 (Claims App.). Other than the function of data collection,
such steps can be performed entirely in the human mind. Although
Appellant states that the Examiner erred in characterizing the claims,
Appellant provides no argument as to what the Examiner purportedly
overlooked or omitted in making that characterization. Appellant's assertion
on this point amounts to an introduction to an argument without providing
any reasoning or explanation as to why the argument is correct.
Claim 1 next recites the steps of
selecting one or more learning goals from the initial set for
the given student based on at least (i) the existing knowledge
state of the given student, (ii) a determined learning style
associated with the given student, (iii) historical data pertaining
to the multiple additional students, (iv) the probability value of
the given student succeeding in each of the multiple learning
goals in the initial set and (v) an exploration threshold associated
with the given student, wherein the exploration threshold
represents a measure of autonomy for academic investigation
afforded to the given student at a given time; [ and]
outputting a first recommendation comprising a first
sequence of multiple learning activities corresponding to said
one or more selected learning goals;
monitoring performance of the given student over the
sequence of multiple learning activities;
Id. As is the case with the previous two steps, the step of "selecting one or
more learning goals from the initial set" can be performed in the mind.
Forming a recommendation is likewise performable in the human mind, but
the steps of "outputting" this recommendation and monitoring performance
of the student are not, and we address these steps under Prong 2.
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Claim 1 next recites
updating (i) the existing knowledge state of the given
student, (ii) the determined learning style associated with the
given student, (iii) the one or more identified interests of the
given student, and (iv) the exploration threshold associated with
the given student based on said monitoring;
using the updated (i) knowledge state of the given student,
(ii) learning style associated with the given student, (iii) one or
more identified interests of the given student, and (iv)
exploration threshold associated with the given student to modify
the one or more selected learning goals for the given student;
and
outputting a second recommendation comprising a second
sequence of multiple learning activities corresponding to said
one or more modified learning goals;
wherein the steps are carried out by at least one computing
device.
Id. at 19-20 ( emphasis added). Here, the "modifying" function is similar to
the initial step of "determining," which, in this context, is a mental process
of evaluating and forming an opinion. See In re BRCAJ- & BRCA2-Based
Heredity Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014); see
also Memorandum at 52 ( defining mental processes as "concepts performed
in the human mind (including an observation, evaluation, judgment,
opinion)" (footnote omitted)). We agree with the Examiner that claim 1
recites a mental process, which is one of the three categories of abstract
ideas set forth in the Memorandum.
We address the "outputting a second recommendation," monitoring
performance of the student, and carrying out the steps "by at least one
computing device" under Step 2A, Prong 2 and Step 2B.
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Step 2A, Prong 2 - Integrated Into a Practical Application
If a claim recites a judicial exception, then, in Prong 2, we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception( s ); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
See Memorandum. This evaluation requires an additional element or a
combination of additional elements in the claim to apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the exception. See id.
The Examiner finds that process of "outputting" and "monitoring" as
well as the step of carrying out the recited functions by at least one
computing device is merely the recitation of "generic computer functions
routinely used in computer applications" and "typical components of a
generic computer." Final Act. 5---6.
Appellant contends that the Examiner has ignored and
overgeneralized stated claim limitations. Appeal Br. 12-13.
The Examiner has the better position on this point. Specifically, the
above-noted functions are merely extra-solution activity, such as data
gathering and providing an output. See Memorandum at 55 n.31. We see no
technological improvement, improvement in the functioning of a computer,
particular machine, or transformation recited by claim 1, and Appellant does
not contend that any of these is recited.
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Step 2B - Well-Understood, Routine, Conventional Activity
In Step 2B, we determine whether the claim adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field. See Memorandum.
Although Appellant argues extensively that there is no outstanding
rejection based on anticipation or obviousness and that the claims are
significantly more than an abstract idea, Appellant does not identify any
purported additional elements that adequately support these arguments. See
Appeal Br. 11-13, Reply Br. 2--4. For example, Appellant
strongly asserts that if a set of "specific limitations" has been
deemed not anticipated, taught, or even suggested by a field of
available art, ( as is the case with the instant claims) then the same
set of "specific limitations" cannot plausibly be simultaneously
argued as being "well-understood, routine and conventional in
the field."
Appeal Br. 13. We disagree, because, although Step 2B (step 2 in the
Alice/Mayo framework) is termed as a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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, 573 U.S. at 217-18 (alteration
in original). A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90-91).
We have considered all of Appellant's arguments in support of the
patent eligibility of claim 1, but find them unpersuasive. Accordingly, we
sustain the rejection of claims 1, 2, 5-11, and 14--16 under 35 U.S.C. § 101.
Dependent claims 3, 4, 12, 13, and 17-20
In support of claims 3, 4, 12, 13, and 17, Appellant states
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Appellant respectfully submits that the Examiner's vague and
non-specific allusion to the "remaining limitations," whichever
limitations those might be, in clearly insufficient to establish
a rejection under 35 U.S.C. § 132 with respect to multiple ones of
the dependent claims. For example, the Examiner fails to
specifically discuss the limitations of claims 3, 4, 12, 13, 17, 18,
19, and 20.
Appeal Br. 17. Appellant provides no substantive explanation as to why any
of these claims recites something significantly more than the mental process
recited in its respective independent claim. See id. We address these claims
below.
Step 2A, Prong 1
Because they are dependent claims, claims 3, 4, 12, 13, and 17-20 all
recite the same abstract idea recited by their respective independent claims.
Step 2A, Prong 2 and Step 2B
Claims 3, 12, and 17 recite substantially similar limitations (see
Appeal Br. 20, 22, 25 (Claims App.), and we reproduce claim 3 below.
3. The method of claim 1, wherein said one or more selected
learning goals comprises a pre-determined number of goals
based on a threshold value associated with the calculated
probability values.
Id. at 20. Thus, claim 3 further defines "said one or more selected learning
goals," which is merely an extension of the mental process discussed above
regarding claim 1. In other words, claim 3 adds nothing beyond the abstract
idea recited in claim 1. Thus, claim 3 fails to survive Step 2A, Prong 2, and,
for the same reasons, fails to survive Step 2B. We sustain the rejection of
claim 3 as patent-ineligible, and claims 12 and 17 fall for the same reasons
as claim 3.
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Claims 4, 13, and 18 recite substantially similar limitations. Appeal
Br. 20, 22, 25 (Claims App.). We reproduce claim 4 below.
4. The method of claim 1, comprising:
calculating the exploration threshold associated with the
given student based on (i) the probability value of the given
student succeeding in each of the multiple learning goals in the
initial set, and (ii) distance values to one or more goals in a given
knowledge graph at the given time.
Id. at 20. Claim 4, like claim 3, merely further recites the abstract idea
recited in claim 1, adding a calculation step, and fails to survive either of
Step 2A, Prong 2 or Step 2B. Accordingly, we sustain the rejection of claim
4 as patent-ineligible, and claims 13 and 18 fall for the same reasons as
claim 4.
Claim 19 depends from claim 15 and recites "storing the first
sequence of multiple learning activities corresponding to said one or more
selected learning goals in a database." Appeal Br. 25 (Claims App.). Claim
20 depends from claim 15 and recites "storing each updated sequence of
multiple learning activities in a database." Id.
We see no technological improvement, improvement in the
functioning of a computer, particular machine, or transformation recited by
corresponding independent claim 15 (see also claim 1 ), and Appellant does
not contend that any of these is recited. Indeed, the information that is
required to be stored in each of claims 19 and 20 is already available, based
on the method recited in claim 15. See id. at 24. Further, we find the step of
storing to be well-understood, routine, and conventional activity.
Accordingly, we agree with the Examiner that dependent claims 19 and 20
are patent-ineligible.
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DECISION
The Examiner's decision to reject claims 1-20 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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