Ex Parte SMITHDownload PDFPatent Trial and Appeal BoardSep 21, 201813633507 (P.T.A.B. Sep. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/633,507 10/02/2012 MATTHEW J. SMITH 28230 7590 09/21/2018 H. JAY SPIEGEL- H. JAY SPIEGEL & ASSOCIATES P.O. BOX 11 MOUNT VERNON, VA 22121 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. CULTURE-1 8823 EXAMINER JASMIN, LYNDA C ART UNIT PAPER NUMBER 3629 MAIL DATE DELIVERY MODE 09/21/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte MATTHEW J. SMITH Appeal2017-000254 Application 13/633,507 Technology Center 3600 Before MURIEL E. CRAWFORD, HUBERT C. LORIN, and MATTHEWS. MEYERS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's final decision rejecting claims 1, 7-9, 11-14, 16 and 18-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). Appellant appeared for an Oral Hearing on September 10, 2018. Appeal2017-000254 Application 13/633,507 BACKGROUND Appellant's invention is directed to a system and method of ranking job candidates. Spec. 1 Claim 1 is illustrative: 1. A method of ranking job candidates using human-based assessments, including the steps of: a) providing a computer having a memory and including input means for inputting information to said computer, and a display, and loading said computer with software for operating said method; b) providing a server connecting said computer to a global computer network; c) providing a website accessible to said computer via said global computer network and server whereby said software facilitates displaying images from said website on said display, said website including: i) a main page with links to secondary pages, clicking on said links facilitating access to said secondary pages; ii) said secondary pages including: A) a first page in which an employer can input information so that said computer can create and register an employer profile; B) a second page in which an employer can input information so that said computer can create a contest challenge; C) a third page in which job candidates can input identifying information about themselves; D) a fourth page where said identifying information concerning job candidates who have participated in a contest challenge may be displayed by said computer; 2 Appeal2017-000254 Application 13/633,507 E) a fifth page on said website and causing said computer to display on said fifth page employer profiles; F) a sixth page associated with said second page, where an employer can cause said computer to specify registration and voting time periods and deadlines, said sixth page where said computer can be caused by said employer to designate a contest challenge one of public or private; d) employers creating employer profiles on said first page by inputting said profiles into said computer memory via said server; e) a website operator using said input means to cause said computer to save said employer profiles in said memory to register said employer profiles; f) job candidates providing said identifying information on said third page by inputting said identifying information including their background and credentials into said computer memory via said server; g) said website operator using said input means to cause said computer to save said identifying information in said memory to register said job candidates; h) at least one employer creating a skills-based contest challenge, said contest challenge being saved by said website operator in said memory by inputting said contest challenge into said computer via said server; i) facilitating access to said contest challenge by registered job candidates including causing said computer to display said contest challenge on said display; j) registered job candidates competing in said contest challenge and causing said computer to save, in said memory, results from said registered job candidates competing in said contest challenge; 3 Appeal2017-000254 Application 13/633,507 k) said website operator facilitating human-based assessments of contest challenge entries provided by job candidates, said human-based assessments being conducted by a plurality of eligible authorized voters voting on said contest challenge entries, said eligible authorized voters including a combination of employers, other users, third party industry professionals and neutral judges; and 1) causing said computer to display on said display, on said fourth page of said website, job candidates who have won contest challenges based upon said human-based assessments, display of said job candidates including identification of contest challenge entry by each respective job candidate and a ranking of contest challenge entries based upon total number of votes received from eligible authorized voters. The Examiner relies on the following prior art reference as evidence of unpatentability Speiser et al. Jeon MacDaniel et al. US 2007/0244570 Al US 2007 /0269786 Al US 2009/0070126 Al Appellant(s) appeal the following rejection(s): Oct. 18, 2007 Nov. 22, 2007 Mar. 12, 2009 Claims 1, 7-9, 11-14, 16 and 18-20 under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception. Claims 1, 7-9, 11-14, 16 and 18-20 under 35 U.S.C. § I03(a) as unpatentable over MacDaniel, in view of Jeon, and further in view of Speiser. PRINCIPLES OF LAW 4 Appeal2017-000254 Application 13/633,507 An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.Ct. 2347, 2354 (2014). In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.72-73 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 ("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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978) ("Respondent's application simply provides a new and presumably better method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S. 63, 64 (1972) ("They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals."). 5 Appeal2017-000254 Application 13/633,507 The patent-ineligible end of the spectrum includes fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611; mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent- eligible side of the spectrum are physical and chemical processes, such as curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores," and a process for manufacturing flour, Gottschalk, 409 U.S. at 69. If the claim is "directed to" a patent-ineligible abstract idea, we then consider the elements of the claim-both individually and as an ordered combination-to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. This is a search for an "inventive concept"-an element or combination of elements sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself. Id. In addition, the Federal Circuit has held that if a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent-eligible under § 101. Cy her Source Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under§ 101."). Claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and displaying ce1iain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent ineligible concept"); see also In re TL! Comma 'ns 6 Appeal2017-000254 Application 13/633,507 LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claims that recite an improvement to a particular computer technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) ( dete1mining claims not abstract because they "focused on a specific asserted improvement in computer animation"). The ultimate determination of eligibility is a question of law, however, "[t]he patent eligibility inquiry may contain underlying issues of fact." Berkheimer v. HP, 881 F.3d 1360, 1365 (quoting Mortg. Grader, Inc. v. First Choice Loan Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) ("The§ 101 inquiry 'may contain underlying factual issues"')). The court in Berkheimer also held "[ w ]hen there is no genuine issue of material fact regarding whether the claim element or claimed combination is well-understood, routine, [or] conventional to a skilled artisan in the relevant field, this issue can be decided on summary judgment as a matter of1aw." Berkheimer, 811 F.3d at 1368. Thus, evidence rnay be helpful where, for instance, facts are in dispute, but evidence is not always necessary. ANALYSIS Re} ection under 3 5 U.S. C. § 101 The Examiner determines that the claims are directed to a series of steps instructing how to rank job candidates who participate in skills-based contests using human-based assessments. The Examiner determines that the claims are directed to (1) organizing information through mathematical 7 Appeal2017-000254 Application 13/633,507 correlations; (2) creating, storing and facilitating a skills-based contest challenge; (3) managing a game which consists of mental steps which can be carried out by a human using pen and paper; and (3) organizing human activity. Final Act. 4. We agree with the Examiner's determination that the claims are directed to an abstract idea. In addition, from our review of claim 1, for example, we determine that the claim is essentially directed to (1) collection of data such as employer profiles, information about a contest challenge, and job candidate information; (2) displaying data such as information concerning job candidates who have participated in a contest challenge, (3) storing data such as employer profiles and contestant information and ( 4) analyzing data such as facilitating human based assessments of contest challenge entries. Therefore the claim is directed to the collection, analysis, storage and display of data and is directed to an abstract idea on this basis as well. We additionally note that the Appellant has acknowledged that the claims include a patent-ineligible concept. Br. 28. The Examiner finds that the generically recited computer elements recited in the claims do not add meaningful limitations to the abstract idea. The Examiner further finds that the claims recite a general purpose computer having a memory, input means, a display and software and that internet access is provided to the computer in a routine way of a server connecting the computer to a global computer network and that accessing a website with various webpages would be routine in any computer implementation. Final Act. 4. In regard to the use of the Internet, the Examiner finds that merely reciting the use of the Internet to perform a business practice of evaluating 8 Appeal2017-000254 Application 13/633,507 job candidates using human assessments is merely and attempt to limit the use of the abstract idea to a particular technological environment. The Examiner finally finds that the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity. Final Act. 5. We agree with these findings of the Examiner and note that Appellant has not argued that the operations of the computers, server, and global computer network are not well-understood, routine, and conventional to a skilled artisan in the relevant field. We are not persuaded of error on the part of the Examiner by Appellant's argument that the claims recite a solution to an Internet-centric problem and resolve that problem in a specific way and effect an improvement to the technical field of screening candidates for employment. In making this argument, the Appellant relies on DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245 (Fed. Cir. 2014). In DDR. the Court determined that a claim may amount to more than C ~ any abstract idea recited in the claims when it addresses a business challenge, such as "retaining website visitors," where that challenge is particular to a specific technological environment, such as the Internet. In DDR, the court stated that "the [] patent's claims address the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host's website after 'clicking' on an advertisement and activating a hyperlink." DDR Holdings, 773 F.3d at 1257. This was done in the clairn by serving a composite page with content based on the link that was activated to serve the page. 9 Appeal2017-000254 Application 13/633,507 In contrast, the process of claim l ranks job candidates using a contest challenge. The problem addressed is providing a method enabling an employer to determine which candidates are the rnost talented as it relates to speci fie job capabilities. Spec. 42. These most talented candidates are identified by use of taknt based competitions to win prizes and more job interviews etc. Using a contest to identify the most talented candidates is not a solution to a technical problem but a solution to a business problem. That computers and servers may assist with administrating the contest is not pertinent to detennining whether the claim itself provides a technical solution to a technical problem. And, unlike the situation in DDR Holdings, we find no indication in the record, nor does Appellant point us to any indication, that the computer, server, memory or the Internet recited in claim 1 is used other than in its normal, expected, and routine manner, e.g., for receiving and transmitting information. We are also not persuaded of error on the part of the Examiner by Appellant's argument that the automated process of the claims effects an improvement in the technical field of hiring employees nowhere previously accomplished with or without use of a computer and the method of the claims solves a specific problem in an extremely unique way. Br. 29-30. To the extent Appellant maintains that the limitations of claim 1 necessarily amount to "significantly more" than an abstract idea because the claimed apparatus is allegedly patentable over the prior art, Appellant misapprehends the controlling precedent Although the second step in the Alice!A1ayo framework is tenned 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 10 Appeal2017-000254 Application 13/633,507 patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. See lvfayo, 566 U.S. at 79, 78 .. Appellant likewise is not persuasive of error on the part of the Examiner by the argument that the claims recite significantly more than any abstract idea because in the absence of the present invention, communication or contest entries to a variety of judging parties would entail utilizing U.S. Mail or facsimile, among other possibilities, and the process of receiving scores from all the parties would extend dramatically. Br. 29. Although the computer may rnake the judging process faster, the fact that the required voting could be perfonned more efficiently via a computer and the Inten1et does not materially alter the patent eligibility of the claimed subject matter See Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). In the Reply Brief, the Appellant argues that the claims are analogous to those found eligible in Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). Reply 5. However, there is a fundamental difference between computer functionality improvements, on the one hand, and uses of existing computers as tools to perform a particular task, on the other. Indeed, in E11:fish, the Federal Circuit applied this distinction in rejecting a § 101 challenge because the claims at issue focused on a specific type of data structure, i.e., a self-referential table for a cornputer database, designed to improve the way a computer caffies out its basic functions of storing and retrieving data, and not merely on asserted advances in uses to which existing computer capabilities could be put. Enfish, 822 F.3d at 1335-36. 11 Appeal2017-000254 Application 13/633,507 \Ve find no parallel here between the claims before us and the claims in Enjlsh nor any comparable aspect in the claims before us that represents "an improvement to computer functionality," i.e., an improvement in the way a computer carries out its basic functions. Id. The aHeged advantages that Appellant argue do not concern an improvement to computer capabilities, but instead relate to an alleged improvement in voting for candidates for which a computer is used as a tool in its ordinary capacity--that is, providing processing technology to execute computer programs that, in turn, receive and manipulate the selected data. In view of the foregoing, we will sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 101. We wm also sustain this rejection as it is directed to the other claims subject to this rejection because the Appellant does not argue the separate patent eligibility of these claims. Rejection under 35 U.S.C. §103(a) \Ve are not persuaded of en-or on the part of the Examiner by Appellant's argument that neither MacDaniel nor Jeon discloses a contest challenge. We agree with the Examiner that as l\1acDaniel discloses at paragraphs 49----51 an open job for which candidates compete by submitting resumes with the intention of being hired over other candidates, l\!1acDaniel does disclose a contest Final .Act 6. In addition, Jeon also discloses at paragraph l an open job for which candidates compete and discloses that this competition explicitly employs a game. \Ve are also not persuaded of error on the part of the Examiner by Appellant's argument that the teachings the Examiner proposes to modify are not included in l\!1acDaniel until they are provided by Jeon and thus this seriously calls into question whether the Examiner has set forth aprima 12 Appeal2017-000254 Application 13/633,507 facie case for obviousness. Br. 33. \Ve know of no precedent, and the Appellant has not cited any, which establishes that modifying a secondary reference by a tertiary reference calls into question an obviousness determination. In any case, the Exarniner relies on Jeon for explicitly teaching an employer creating a contest challenge and Speiser for teaching registration and voting time periods and deadlines for contests. Fin. Act. 10. However, we agree with the Examiner that the disclosure of a contest challenge to obtain a job is taught by l\tfacDanieL Therefore a person of ordinary skill in the art would have had a reason to modify MacDaniel with the teachings in Speiser because any job application process ( contest challenge) as taught by lVfacDanie1 would employ voting time periods and deadlines. In view of the foregoing, we will sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a). \Ve will also sustain this rejection as it is directed to claims 7, 8, 12, 13, 14, 16, and 18-20 because the Appellant advance the same or sirnilar arguments regarding the patentability of these claims as was advanced in regard to the rejection of claim 1. \Ve will not sustain the Examiner's rejection of claim 9 under 35 U.S.C. § 103(a). Claim 9 is dependent from claim 1 and also recites "said employer causing said computer to specify a number of votes within a time period." The Examiner relies on paragraphs 43 and 44 of Speiser for teaching this subject matter. These paragraphs of Speiser relate to who can be a voter for contestants and how the votes rnay be cast but do not disclose that an employer specifies a number of votes within a time period. Appellant argues, in regard to the rejection of claim 11, that the relied on portion of Jeon discloses that a person is a candidate for an interview as 13 Appeal2017-000254 Application 13/633,507 opposed to the definitive statement that a job interview has been awarded as is recited in claim 11. Br. 40. We agree with the Examiner that the disclosure in paragraph 74 of Jeon that a user is selected as a final candidate for interview is a recitation that a job interview has been awarded. Therefore, we will sustain the Examiner's rejection of claim 11 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner's § 101 rejection. We also affirm the Examiner's§ 103 rejection of claims 1, 7, 8, 11- 14, 16and 18-20. We do not affirm the Examiner's § 103 rejection of claim 9. TIME PERIOD 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) (2009). ORDER AFFIRMED 14 Copy with citationCopy as parenthetical citation