Ex Parte ROSCHELLE et al

Patent Trial and Appeal Board

Sep 28, 2018

13477952 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/477,952 05/22/2012
28863 7590 10/02/2018
SHUMAKER & SIEFFERT, P.A.
1625 RADIO DRIVE
SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
JEREMY ROSCHELLE
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.
6487-2-7049-0106 1079
EXAMINER
FLETCHER, JERRY-DARYL
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY ROSCHELLE,
SARAH ZANER, and CHARLES M. PATTON
Appeal2017-008830
Application 13/477,952
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeremy Roschelle et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-14 and 24--27 under 35
U.S.C. § 101, as being directed to patent-ineligible subject matter. 1 Claims
1 The Examiner has withdrawn the rejections of claims 1-14 and 24--27 under
35 U.S.C. § 103(a). See Examiner's Answer 4 (hereinafter "Ans.") (dated
Mar. 30, 2017); see also Final Office Action 4--12 (hereinafter "Final Act.")
(dated Sept. 30, 2016).
Appeal2017-008830
Application 13/477,952
15-23, 28, and 29 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to technology driven classroom
learning." Spec. ,r 2, 2 Figs. 1-2. More particularly, the claimed subject
matter "relates to systems and methods for collaborative learning," in which
the "system comprises a server and activity stations connected to the server,
the activity stations each including a shared display, input devices, a
processor and a computer-readable medium." Id. ,r 4.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A computer-implemented method for providing
collaborative learning, the method comprising:
presenting a first task to a plurality of users on a shared
display;
receiving a plurality of inputs from a corresponding
plurality of user devices for collectively solving the first task,
wherein each of the user devices is associated with a different
one of the users and at least one of the user devices includes a
microphone, the received inputs indicating information in
addition to whether the first task is correctly performed, and at
least one of the received inputs includes an audio record of at
least one of the users;
analyzing the received inputs to determine whether the
first task is correctly performed;
2 Specification (hereinafter "Spec.") (filed May 22, 2012).
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Application 13/477,952
inferring one or more probabilistic conclusions about a
level of comprehension associated with the first task, each
probabilistic conclusion being a conclusion based upon collected
data that is more or less likely to be true based on a value of the
collected data, wherein the one or more probabilistic conclusions
are inferred at least in part from the received inputs, including
the audio record of at least one of the users, and from comparing
the indicated information of the received inputs to a threshold to
determine if the level of comprehension is average, above
average, or below average; and
presenting a private feedback to a user in the plurality of
users through the user device associated with the user, wherein
the private feedback corresponds to the inferred probabilistic
conclusions, differs from feedback provided to others in the
plurality of users, and comprises information other than whether
the first task was correctly solved.
ANALYSIS
Appellants do not offer arguments in favor of claims 2-14 and 24--27
separate from those presented for independent claim 1. See Appeal Br. 5---6; 3
see also Reply Br. 2-3. 4 We select claim 1 as the representative claim, and
claims 2-14 and 24--27 stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner applies the
two-step framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1296-97 (2012) and reiterated in Alice
Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014),
which considers, in the first step, whether the claims are "directed to" a
3 Appeal Brief (hereinafter "Appeal Br.") (filed Feb. 23, 2017).
4 Reply Brief (hereinafter "Reply Br.") (filed May 30, 2017).
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Application 13/477,952
patent-ineligible concept, e.g., an abstract idea, and then, in a second step,
whether the claims, individually and as an ordered combination, recite an
inventive concept-an element or combination of elements sufficient to
ensure the claims amount to "significantly more" than the abstract idea and
transform the nature of the claims into a patent-eligible concept.
Pursuant to the first step of the analysis, the Examiner determines that
claim 1 is directed to the abstract idea of
providing collaborative learning comprising:
providing a first task to a plurality of users;
receiving a plurality of inputs for collectively solving the
first task;
analyzing the received inputs to determine whether the
first task is correctly performed and to infer one or more
probabilistic conclusions about a level of ... presenting a private
feedback to a user, wherein the private feedback corresponds to
the inferred probabilistic conclusions, the private feedback
differing from feedback provided to others and comprising
information other than whether the task was correctly solved.
Final Act. 2-3 ( emphasis omitted). According to the Examiner, "the
invention merely provides a task to a plurality of users, receives input from
the users in response to the task provided, and then analyzes the responses
for correctness before providing feedback to the users," and that "this is
interpreted as the comparing of new information (user input) and stored
information (threshold, correct task info); and using rules (probabilistic
conclusions) to identify options (private feedback)." Id. at 3.
Appellants contend that "the claims are directed to statutory subject
matter (namely, a process)." Appeal Br. 5.
Here, the Examiner correctly points out: (1) "the test for subject
matter eligibility involves a two-step analysis," (2) "[u]nder step 1 of the
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analysis[,] the claims are determined to be directed to processes, which are
[in a] statutory category of invention," (3) "[n]ext, the claims are analyzed to
determine whether they are directed to a judicial exception," and ( 4) "[i]n
the instant case, the [] idea of collecting information, analyzing it, and
displaying certain results of the collection and analysis [is] similar to the
concepts that have been identified as abstract by the courts [ which are
deemed to be patent-ineligible subject matter]." Ans. 5 (citing Electric
Power Group v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
Indeed, our reviewing courts have held claims ineligible under § 101
when directed to data gathering and data analysis. See, e.g., Electric Power
Group v. Alstom S.A., 830 F.3d at 1353-54. The claims in Electric Power
Group are like claim 1, in that they are both directed to gathering and
analyzing information and then presenting results, without any particular
asserted inventive technology for performing those functions. See Final Act.
4 ( explaining that "the claims themselves do not purport to improve the
functioning of the computer itself, or to improve any technology or technical
field").
Because claim 1 involves merely the concept of collecting and
analyzing information, which the case law cited above characterizes as being
directed to an abstract idea and further as being patent-ineligible subject
matter, we agree with the Examiner's determination that claim 1 is directed
to an abstract idea.
We now address the second step of the Alice framework. Under the
second step, the Examiner determines that the claims do not recite additional
limitations amounting to significantly more than the claimed abstract idea,
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because the additional limitations only involve routine and conventional
activity. Final Act. 3--4. Specifically, the Examiner determines that
Id.
the recited shared display is merely used to display information
to a plurality of users; the input devices are merely used for
receiving user inputs and providing output to the users; and the
processor is merely used for analyzing inputs. These are all
ubiquitous, non-novel uses of the additional elements that fail to
add patentable weight to the abstract idea. In the context of this
analysis, these additional elements must involve more [] than the
performance of well-understood, routine [and] conventional
activities previously known in industry.
When analyzing the claim limitations as a whole the
claims merely accept user input, compare it to stored data and
provide feedback based on the comparison. When viewed either
as individual limitations or as a combination, the claims as a
whole do not significantly add to the abstract idea. . . . . Use of
an unspecified generic computer does not transform an abstract
idea into a patent-eligible invention[;] thus the claims do not
amount to significantly more than the abstract idea itself.
Appellants contend that: (1) "the claims ... recite inventive concepts,
as defined by the Alice case and cases interpreting that decision," (2) "claim
1 presents the unconventional combination of inferring one or more
probabilistic conclusions about a level of comprehension associated with the
first task, in combination with the other recited processes" because "the one
or more probabilistic conclusions are inferred at least in part from comparing
indicated information of the received inputs to a threshold to determine the
level of comprehension, where the indicated information is information in
addition to whether the first task is correctly performed," "each probabilistic
conclusion is a conclusion based upon collected data that is more or less
likely to be true based on a value of the collected data," and (3) "[t]hese
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features are not present in the cited art by themselves or in combination with
the other features recited in the claim." Appeal Br. 5---6; see also Reply Br. 2
(arguing that "the claimed functions are new. The Examiner acknowledged
this by withdrawing the prior art rejections of the appealed claims.").
Appellants' arguments are not persuasive. The Examiner correctly
points out,
[the] concept of assessing a user and providing feedback is
indisputably well-known in the art of education. Specifically,
this is interpreted as the comparing of new information (user
input) and stored information (threshold, correct task info); and
using rules (probabilistic conclusions) to identify options
(private feedback).
Final Act. 3. The Examiner further points out that
the inferring of one or more probabilistic conclusions about the
level of comprehension is an unconventional step that is directed
to the abstract idea and not to the improvement of the computer
functionality (see Enfish LLC v. Microsoft Corp.). In this regard,
the unconventional nature of the abstract idea does not mitigate
the fact that it is still an abstract idea.
Ans. 6. Stated differently, inference and probabilistic conclusions are data
analysis components that are considered abstract and Appellants do not
provide evidence or persuasive arguments to show that the claimed steps
involving inference and probabilistic conclusions transform the nature of
claim 1 into a patent-eligible concept. Moreover, as noted by Appellants,
"in Electric Power Group v. Alstom, if the claimed functions themselves are
not new, then the technology used to perform those functions must be new
for the claimed invention to qualify as an 'inventive concept."' Reply Br. 2
(citing Electric Power Group, 830 F.3d at 1355). However, Appellants do
not provide evidence or persuasive arguments to show that the technology
used to perform the functions recited in claim 1 is new for the claimed
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invention to qualify as an "inventive concept." Further, even assuming that
claim 1 is "a novel and nonobvious" modification, as the Supreme Court has
stated, "[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, 450 U.S. 175, 188-89 (1981). Thus, we are not
apprised of Examiner error based on these arguments.
As such, we fail to see how the claimed invention is something other
than data gathering and data analysis. Accordingly, claim 1, when its
limitations are considered both individually and as an ordered combination,
amounts to nothing more than an attempt to patent the abstract idea
embodied in the steps carried out by a processor. Thus, the additional
limitations of claim 1 fail to transform the nature of the claim into patent-
eligible subject matter.
For the above reasons, Appellants fail to apprise us of error in the
Examiner's determination that claim 1 is directed to patent-ineligible subject
matter. Accordingly, we sustain the Examiner's rejection of claim 1.
Claims 2-14 and 24--27 fall with claim 1.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-14 and
24--27 as being directed to patent-ineligible subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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