Ex Parte Talbot et al

Board of Patent Appeals and Interferences

May 27, 2010

10881279 - (D) (B.P.A.I. May. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK JAMES TALBOT and DENNIS REGAN ELLIS
____________

Appeal 2008-004894
Application 10/881,279
Technology Center 2100
____________

Decided: May 27, 2010
____________

Before CARLA M. KRIVAK, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims
1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellants’ claimed invention relates to systems and methods for generating
a decision network from text (Spec. ¶ [0001]). The invention includes using
various components and/or algorithms for extracting and classifying evidence and
building a decision network based on the information extracted and classified
(Spec. ¶¶ [0006]-[0008]).
Independent claims 1 and 17, reproduced below, are representative of the
subject matter on appeal.

1. A system for generating a decision network from text, the system
comprising:

memory that stores a plurality of segments; and

a processing unit for accessing the memory and for executing
computer executable instructions, the computer executable
instructions comprising:

an information extraction algorithm that extracts a quantum of
evidence and an associated confidence value from a given text
segment;

an evidence classification algorithm that associates each
quantum of evidence with one of a plurality of hypotheses;

a fusion engine algorithm that builds a decision network from
the plurality of hypotheses, an associated base structure, the extracted
quanta of evidence, and the confidence values; and

a user interface that displays the generated decision network to
a user.

17. A method for generating a decision network from a plurality of
text segments, comprising:
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retrieving a plurality of text segments from a memory;

extracting evidence, in the form of an evidence template, from
each of the plurality of text segments;

assigning each of the evidence templates into one of a plurality
of hypotheses via at least one classification technique;

generating a decision network from the assigned evidence
templates and the plurality of hypotheses; and

displaying the generated decision network to a user.

REFERENCES
Matsuda US 4,860,214 Aug. 22, 1989
Weeks US 6,334,132 B1 Dec. 25, 2001
Bergman US 2003/0028469 A1 Feb. 6, 2003

The Examiner rejected claims 1-23 under 35 U.S.C. § 101 based upon non-
statutory subject matter.
The Examiner rejected claims 1, 2, 4, 5, 10-12, 14, 16, 17, and 19-23 under
35 U.S.C. § 103(a) based upon the teachings of Matsuda and Weeks.
The Examiner rejected claims 3, 6-9, 13, 15, and 18 under 35 U.S.C.
§ 103(a) based upon the teachings of Matsuda, Weeks, and Bergman.
Appellants contend the claims do not need to be limited to a particular
application, but that the practical application be tied to the claims through the
specification, that memory and processing means, and a computer readable
medium are recited, and that each claim produces a transformation of a physical
object (App. Br. 6-7; Reply Br. 5-6).
Appellants further contend none of the references teach or suggest an
evidence classification algorithm (App. Br. 9, 11, 12, and 13).
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ISSUES
Did the Examiner err in finding claims 1-23 are directed to non-patent-
eligible subject matter under 35 U.S.C. § 101?
Did the Examiner err in rejecting Appellants’ claims under 35 U.S.C. § 103
over various combinations of Matsuda, Weeks, and Bergman?

FINDINGS OF FACT
1. Appellants’ Background of the Invention, states, as an example, a
decision graph can be used to predict the age of a customer based on the products a
customer purchases (¶ [0002]).
2. Appellants’ Specification further states, as an example, a practical
system could be a security application (¶ [0042]).

PRINCIPLES OF LAW
“[A]n applicant may show that a process claim satisfies § 101 either by
showing that his claim is tied to a particular machine, or by showing that his claim
transforms an article” into a different state or thing. In re Bilski, 545 F.3d 943, 961
(Fed. Cir. 2008) (en banc); see also Gottshalk v. Benson, 409 U.S. 63, 70 (CCPA
1972).

ANALYSIS
The Examiner rejected claims 1-23 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter for the reason that the claims do not recite a
practical application producing a real world result (Ans. 3). The Examiner finds
the result of “generating and/or displaying a decision network does not amount to a
practical application” (emphasis omitted). Thus, the Examiner reasons, the claims
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are so broadly written as to read on both statutory and non-statutory subject matter.
(Ans. 4)
Appellants respond they do not believe the claims need to be limited to a
particular application, only that a practical application be tied to the claims by way
of the specification. Appellants state the specification notes the decision network
is tied to security applications and retail sales tracking. (App. Br. 6) Appellants
then assert the claims recite memory or means for storing, a processing unit or
means for processing, or a computer readable medium, stating these limitations
clearly constitute patentable subject matter (App. Br. 6-7; Reply Br. 5-6). Lastly,
Appellants state a display or means for displaying is a physical transformation
(App. Br. 7; Reply Br. 6).
We agree with the Examiner’s finding that State Street (State St. Bank &
Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998),
cited by Appellants, does not apply, as a final share price is not the same as the
claimed abstract belief network (Ans. 26).
The Court of Appeals for the Federal Circuit (CAFC) has recently clarified
the law regarding patent eligible subject matter in Bilski, and affirmed the holding
in Benson, stating:
as illustrated by Benson…the use of a specific machine or
transformation by an article must impose meaningful limits on the
claim’s scope to impart patent-eligibility. See Benson, 409 U.S. at 71,
72. Second, the involvement of the machine or transformation in the
claimed process must not merely be insignificant extra-solution
activity. See [Parker v.] Flook, 437 U.S. [584, 590 (1978]).

Id. at 961, 962
The Board of Appeals also recently clarified that
[a] claim must be limited to a tangible practical application, in which
the mathematical algorithm is applied, that results in a real-world use
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and be limited so as to not encompass substantially all practical
applications of the mathematical algorithm.

Ex parte Gutta, No. 2008-4366, 2009 WL 2563524 at 19 (BPAI 2009)
(precedential).
With respect to claim 17, this claim recites a method for generating a
decision network. The steps recited are merely data gathering steps with no
attached structure. That is, the method recited in claim 17 can be performed in any
manner, without a specific machine, as it is merely manipulating data.
Furthermore, although Appellants assert displaying the generated decision
network recited in claim 17 is a transformation (App. Br. 7-8; Reply Br. 6), as
reaffirmed in Bilski, “graphically displaying variances of data from average
values” in claim 17 does not specify the type or nature of the data (Bilski, 545 F.3d
at 962 (citing In re Abele, 684 F.2d 902, 909 (CCPA 1982)). Claim 17 does not
require any transformation of an underlying physical object that the data
represents, thus the step of displaying is merely an insignificant post solution
activity (see id). Because there is no machine or transformation recited, claim 17
wholly preempts all methods for generating the claimed decision network.
Claim 1 recites a system comprising a processing unit for executing
computer executable instructions that comprise a plurality of algorithms. Although
the claim recites a processing unit and a display, the claim fails to recite any
tangible practical application in which the mathematical algorithms are applied that
result in a real-world use. See Ex parte Gutta at 15. Thus, we treat Appellants’
addition of recited structure (i.e., the claimed “processing unit” and “display” of
claim 1) to the underlying method of “generating a decision network” as merely a
pro forma claim drafting technique. In other words, claim 1 is simply a method
claim dressed in the form of a system claim.
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As noted above regarding claim 17, generating a decision network is merely
data gathering with no particular structure. Thus, claim 1’s system for generating a
decision network is not limited to any specific machine or apparatus.
Further, the generated decision network does not represent any transformed
physical or tangible object. In fact, Appellants admit the claims do not need to be
so limited (App. Br. 3; Reply Br. 5). Although Appellants state the specification
references predicting the age of a customer in the background section (FF 1) and
merely mentions security applications (FF 2), there are no specifics provided in the
specification. Appellants, however, provide no explanation as to how such
examples show transformation of the claimed decision network into a physical or
tangible object. Also, as noted above regarding claim 17, displaying the resulting
data is merely an insignificant post solution activity, as it does not specify the type
or nature of the data. Thus, claim 1 also does not require any transformation of an
underlying physical object that the data represents. Because there is no machine or
transformation recited, claim 1 wholly preempts all systems for generating the
claimed decision network.
The above analysis also applies to claims 14 and 21. The computer readable
medium (claim 14) or means for processing (claim 21) does not tie the recited
components or means to any specific machine or apparatus, and the decision
network does not represent any physical or tangible object. That is, the computer
readable medium or processing means and display fail to impose any meaningful
limits on the claims’ scope. Again, displaying is considered insignificant post
solution activity.
Because there is no machine or transformation in independent claims 1, 14,
17, and 21, these claims wholly preempt all methods and systems for generating
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the claimed decision network. Accordingly, claims 2-13, 15, 16, 18-20, 22, and
23, which depend therefrom, are also not patent eligible under 35 U.S.C. § 101.
Because the claims do not meet the threshold requirements of 35 U.S.C.
§ 101, the rejection under 35 U.S.C. § 103 is vacated. In re Comiskey, 554 F.3d
967, 973 (Fed. Cir. 2009) (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981)).

CONCLUSION
The Examiner did not err in finding claims 1-23 are directed to non-patent-
eligible subject matter under 35 U.S.C. § 101.

DECISION
The Examiner’s decision rejecting claims 1-23 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)(1)(iv).

AFFIRMED

KIS

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