Ex Parte Scudder et al

Patent Trials and Appeals Board

May 31, 2019

14258241 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/258,241 04/22/2014 Timothy J. Scudder
27189 7590 06/04/2019
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
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.
113425-00lUTl 7474
EXAMINER
FLETCHER, JERRY-DARYL
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/04/2019 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):
docketing@procopio.com
PTONotifications@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY J. SCUDDER and KENT MITCHELL 1
Appeal2018-000716
Application 14/258,241
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, 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 a rejection of claims
19-38. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appeal Brief lists Personal Strengths Publishing, "Appellant," as the
real party in interest. Appeal Br. 2.
2 Claims 1-18 are withdrawn. Appeal Br. A-1-A-3 (Claims App.).
Appeal2018-000716
Application 14/258,241
CLAIMED SUBJECT MATTER
The claims are directed to a system and stored set of instructions for
displaying personality assessment results. Claim 19, reproduced below, is
illustrative of the claimed subject matter:
19. A system for displaying results of a personality
assessment, the system comprising:
at least one hardware processor; and
one or more executable software modules that, when
executed by the at least one hardware processor, for each of one
or more people,
3 Spec. ,r 7.
receive a plurality of selections from an ipsative
assessment completed by the person,
calculate a motivational-value-system (MVS)[3J set
of scores and a conflict sequence (CS)[4J set of scores for
the person based on the plurality of selections,
calculate a first point, corresponding to the MVS set
of scores, within a triangle,
calculate a second point, corresponding to the CS
set of scores, within the triangle,
display the triangle with a first indication at the first
point and a second indication at the second point, wherein
the triangle comprises
three sides of equal length,
three vertices,
seven demarcated MVS regions representing
seven well states into which a person is classifiable,
wherein the seven MVS regions comprise a hexagon-
shaped MVS Hub region in a center of the triangle and
six MVS regions surrounding the hexagon-shaped
MVS Hub region, and wherein the seven MVS regions
cover the entire area of the triangle,
thirteen demarcated CS regions representing
thirteen conflict states into which a person is
classifiable, wherein the thirteen CS regions comprise
4 Spec. ,r,r 8-11.
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Application 14/258,241
a hexagon-shaped CS Hub region in the center of the
triangle and twelve CS regions surrounding the
hexagon-shaped CS Hub region, and wherein the
thirteen CS regions cover the entire area of the triangle
so as to overlap the seven MVS regions.
Appeal Br. A-4 (Claims App.). Appellant's Summary of the Claimed
Subject Matter refers to Figures 9-17 and 19 as depicting the structure5
recited in claim 19. Id. at 2--4. Figures 1-8 depict prior art versions of the
triangle recited in claim 19. See Figs. 1-8, Spec. ,r,r 76-79.
REJECTION
Claims 19-38 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. Final Act. 2.
OPINION
Appellant makes arguments for the patent eligibility of claims 19-38
as a group. See Appeal Br. 4, 9. We select claim 19 as the representative
claim, and claims 20-38 stand or fall with claim 19. 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
5 Figure 12 is a flowchart depicting certain functions recited in independent
claims 19 and 29 and dependent claims.
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Application 14/258,241
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int '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
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
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Application 14/258,241
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation and 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
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.
In January of 2019, the PTO 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 MPEP § 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.
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Application 14/258,241
See Memorandum.
Step 1 - Statutory Category
Claim 19 recites a system including a hardware processor, and,
therefore, is a machine. See Appeal Br. A-4 (Claims App.).
Step 2A, Prong 1 - Recitation of Judicial Exception
In determining that claim 19 is directed to a judicial exception to
patent eligibility, without significantly more, the Examiner takes the position
that this claim is directed to performing clinical tests and then analyzing the
results. Final Act. 3. The Examiner characterizes the steps of receiving a
plurality of selections from an assessment and calculating a plurality of
scores based on the selections as "comparing of new and stored data and the
use of rules to identify options." Id. Additionally, the Examiner determines
that claim 19 "essentially involve[ s] the use of input data to perform
calculations and then visually represent the calculations." Id.
Appellant asserts that the Examiner erred because the Examiner's
analysis "ignores the half of the claim that represents the entire gist of the
claim and the stated improvement of the invention, i.e., to improve the SDI®
triangle." Appeal Br. 4 ( citing Spec. ,r,r 66-69). Appellant then quotes
claim 19, beginning with the "display" step and concludes "[i]gnoring half
of the claim limitations ( over 60% by word count) - let alone, the entire gist
of the claim - fails to consider the claim in its 'entirety' -let alone, with
sufficient specificity to ensure a meaningful inquiry, as required under the
law." Id. at 5.
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Application 14/258,241
As recited in claim 19, the system includes at least one software
module that receives a plurality of a person's selections from an ipsative 6
assessment completed by that person, calculates MVS scores and CS scores
based on these selections, calculates first and second points corresponding,
respectively, to the MVS and CS scores, and then plots these points in a
triangle. See Appeal Br. A-4. The triangle is then displayed. See id.
Accordingly, claim 19 explicitly recites two different calculations and
plotting of the results of these calculations on a diagram ( the triangle). Thus,
we agree with the Examiner (see Final Act. 3) that claim 19 recites
performing mathematical calculations, which is an abstract idea. See
Memorandum 52; Bilski, 561 U.S. at 611 ("The concept of hedging ...
reduced to a mathematical formula ... is an unpatentable abstract idea").
We also agree with the Examiner that collection of the above-noted
data (a person's selections from an ipsative assessment) and then performing
scoring based on this data amounts to "comparing of new and stored data
and the use of rules to identify options." Final Act. 3. These steps can be
performed practically entirely in the human mind. Accordingly, claim 19
recites a mental process, which is another of the three enumerated categories
of abstract ideas set forth in the Memorandum. See Memorandum 52;
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 1149 (Fed.
Cir. 2016) (holding that claims to the mental process of "translating a
functional description of a logic circuit into a hardware component
description of the logic circuit" are directed to an abstract idea, because the
6 "Designating or involving a measurement or scale calculated relative to a
person's own performance or responses, rather than those of others."
https://en.oxforddictionaries.com/definition/ipsative (last visited May 17,
2019).
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Application 14/258,241
claims "read on an individual performing the claimed steps mentally or with
pencil and paper").
As for Appellant's argument that the Examiner failed "to address the
entire gist of the claim, i.e., the improvements to the SDI® Triangle"
(Appeal Br. 5), we address the limitations of the displayed triangle, i.e., the
limitations following the recitation of the above-noted abstract ideas, in Step
2A, prong 2 and in Step 2B.
Step 2A, Prong 2 - Integrated Into a Practical Application
If a claim recites a judicial exception, then, in Step 2A, 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.
Referring to a Declaration executed by Timothy J. Scudder7
(hereinafter the "Scudder Declaration"), Appellant asserts that, in the prior
art triangle used for personality assessments such as described in the
Specification, "human judgment was required ... , reproducibility was
7 Timothy J. Scudder is one of the named inventors in the present
app li cation.
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Application 14/258,241
diminished, and personality assessments could not be processed in high
volumes." Appeal Br. 8; see also Scudder Declaration. Appellant contends
that, in contrast to previous personality assessments using a conventional
triangular diagram, claim 19 improves an existing technological process
because "'a hexagon-shaped MVS Hub region,' allow[s] computers to
produce more accurate, reproducible, and scalable personality assessments
that previously required human judgment." Appeal Br. 8 ( citing Spec. ,r,r 3-
5).
We disagree with Appellant's arguments on this point. The Scudder
Declaration states that in conventional SDI® triangles,
when a set of three scores resulted in an intersection that was
exactly on a straight boundary of the surrounding MVS regions
or near the curved boundary of the circular MVS hub, a human
judgment was required with respect to a personality assessment
for the individual represented by that intersection.
Scudder Declaration ,r 3. Due to such difficulties, Mr. Scudder "devised
new numerical definitions for each of the seven MVS regions, including the
MVS hub, as well as the thirteen Conflict Sequence (CS) regions," and, after
Mr. Scudder devised these new numerical definitions, he "drew a new
triangle using those definitions." Id. ,r 4. Mr. Scudder states that he "was
surprised to find the appearance of a hexagon-shaped MVS hub, and a
reshaping of the CS boundaries." Id. Thus, the Scudder Declaration
supports a finding that the way the information in the triangle is depicted is
the cause of any improved functionality. The fact that such improved
functionality persists when the triangle is implemented via a computer does
not improve the functionality of the computer itself. In other words, the
limitations in claim 19 following the phrase "display the triangle" do not
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Application 14/258,241
improve the functionality of the recited hardware processor that performs the
display function. Rather, these limitations define how the information
collected in the previously recited steps is displayed.
Appellant's Specification supports this reading of claim 19. For
example, paragraph 71 of the Specification explains that, for one
embodiment of the invention, "a printed material for plotting results of a
personality assessment is disclosed[, and t ]he printed material comprises a
triangle that comprises [the limitations following the phrase 'display the
triangle' in claim 19]." We also reproduce paragraph 93 below, with
emphasis added.
As a result of the mathematical definitions above, which
include boundaries lying at decimal numbers (e.g., 24.3, 33.3,
and 42.3 for MVS, and 27 .3 and 39 .3 for CS) as opposed to whole
numbers, the border lines between the MVS and CS regions
differ from those in a conventional SDI® Triangle. However,
for simplicity of understanding, the references used for the
regions in the modified SDI® Triangles illustrated herein are the
same as those used for the conventional SDI® Triangles. Even
though these regions may differ in area and/or shape in the
modified SDI® Triangles, they still represent the same well types
and conflict types as the analogous regions in conventional
SDI® Triangles.
Thus, Appellant's Specification explains that the inventive triangle
changes the boundaries from those provided in a conventional SDI®
Triangle. Appellant's Specification further states, "[t]he modified SDI®
Triangle may be provided on printed material as a tool for personality
assessment. For example, the modified SDI® Triangle illustrated in FIG. 11
may be printed on a substrate, such as paper." Spec. ,r 108 (emphasis
added); see also Appeal Br. A-1 (Claims App.)("A material for plotting
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Application 14/258,241
results of a personality assessment, wherein the material comprises: a
substrate; and a triangle printed on the substrate.").
We do not agree with Appellant (see Appeal Br. 7-8; Reply Br. 4--5)
that displaying such printed material, based on collected data, with a system
using a hardware processor, improves an existing technological process.
"[T]he claims here fail because arranging information along an axis does not
improve the functioning of the computer, make it operate more efficiently,
or solve any technological problem." Trading Techs. Int'!, Inc. v. !BG LLC,
921 F.3d 1378, 1385 (Fed. Cir. 2019). Thus, contrary to Appellant's
assertions (Appeal Br. 7-8), the claims are not analogous to those of McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)
because in McRO, the court concluded that the claims were directed to a
technological improvement over existing, manual 3-D animation techniques
and used limited rules in a process specifically to achieve an improved
technological result.
Further, in the context of 35 U.S.C. § 102, our reviewing court has
held that non-functional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art. In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). We determine that the
limitations in Appellant's claim 19 defining the triangle are non-functional
descriptive material, which, as explained below, informs the analysis in step
2A, prong 2 and step 2B. In Ngai, the Examiner allowed claim 1, which
recited a method, and rejected claim 19, which recited a kit with, among
other things, instructions describing the method of allowed claim 1. Id. at
1337-1338. Ngai argued that the addition of new printed matter to a known
product makes the product patentable, and therefore, the rejection of claim
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19 was improper. Id. at 1338. Rejecting Ngai's argument, the court said,
"[i]f we were to adopt Ngai's position, anyone could continue patenting a
product indefinitely provided that they add a new instruction sheet to the
product. ... [Ngai is not] entitled to patent a known product by simply
attaching a new set of instructions to that product." Id. at 1339.
The recitations regarding the particular values and shapes of the
various borders in the triangle of Appellant's claim 19 are similar to the
recited instructions on the package in Ngai. Specifically, the various
limitations regarding the triangle after the phrase "display the triangle" in
claim 19 are not functionally related to the substrate upon which they are
placed, as evidenced by Appellant's Specification. See Spec. ,r,r 71, 93, 104,
108. Rather, the recited triangle is merely a graphical depiction used to
convey information. See id. As our reviewing court has generally found,
printed matter falls outside the scope of§ 101 (see AstraZeneca LP v.
Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010); In re Marco Guldenaar
Holding B. V., 911 F.3d 1157, 1161 (Fed. Cir. 2018)), and given that the
triangle recited in claim 19 is not functionally related to its substrate, 8 the
triangle does not integrate the judicial exception recited in claim 19 into a
practical application of that exception.
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.
8 Whether the Triangle has a function, per se, is a different question from
whether the Triangle is functionally related to its substrate. See Ngai, 367
F.3d at 1339.
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Appellant asserts that the system recited in claim 19 creates no
preemption problem because claim 19 limits the way the recited triangle is
depicted. See Appeal Br. 8-9; Reply Br. 5.
As our reviewing court has explained, "the principle of preemption is
the basis for the judicial exceptions to patentability" and "[ fJor this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 573 U.S. at 216). Although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Id. Moreover, "[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.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362---63 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (2015)("[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the ecommerce setting do not make them any less abstract.").
Although claim 19 specifically limits, in various ways, the depiction
of the recited triangle, and, therefore, would seem to exclude numerous other
depictions of the same information, we do not agree that claim 19 recites
anything significantly more than the abstract ideas discussed above in Step
2A. In particular, the particular depiction of the triangle recited in claim 19
is non-functional descriptive material, which, as explained in Guldenaar,
does not transform an otherwise ineligible claim into an eligible one.
"Because the only arguably unconventional aspect of the recited method of
playing a dice game is printed matter, which falls outside the scope of§ 101,
the rejected claims do not recite an 'inventive concept' sufficient to
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'transform' the claimed subject matter into a patent-eligible application of
the abstract idea." In re Guldenaar, 911 F.3d at 1162.
Appellant also compares claims 19-38 to withdrawn claims 1-18,
stating "[ c ]laims 1-18 are directed to the same specifically-defined triangle
as Claims 19-38" and "as a manufacture and/or composition of matter,
Claims 1-18 are indisputably eligible under 35 U.S.C. 101." Appeal Br. 9.
Appellant's assertion that claims 1-18 are patent eligible, and, therefore,
claims 19-3 8 are too, is not persuasive. Our analysis of claims 19-3 8 is set
forth above, and we need not address the patent-eligibility vel non of claims
1-18 as these claims are not part of the present appeal.
We have considered all of Appellant's arguments in support of the
patent eligibility of claim 19, but find them unpersuasive. Accordingly, we
sustain the rejection of claims 19-38 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 19-38 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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