Ex Parte ThomasDownload PDFPatent Trial and Appeal BoardMay 31, 201813659260 (P.T.A.B. May. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/659,260 10/24/2012 75436 7590 06/04/2018 MORSE, BARNES-BROWN & PENDLETON, P.C. ATTN: IP MANAGER City Point 230 Third A venue, 4th Floor WALTHAM, MA 02451 Kyle A. Thomas 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. TPTP-001-101 3074 EXAMINER ZAMAN, SADARUZ ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 06/04/2018 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): patentmail@mbbp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KYLE A. THOMAS Appeal2017-006656 Application 13/659,260 Technology Center 3700 Before KEVIN F. TURNER, BENJAMIN D. M. WOOD, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-006656 Application 13/659,260 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. THE INVENTION Appellant's claims are directed "to computer-implemented systems and methods for verifying and determining the acceptability of one or more unverified survey items." Spec. 1, 11. 19-21. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer implemented method for determining acceptability of an unverified survey item, the method compnsmg: outputting, through at least one output device, one or more interactive displays comprising a survey, the survey comprising: a verified quantitative item for measuring respondent positions along a continuum for a first trait, the verified quantitative item comprising a prompt and a plurality of quantitative response choices; and an unverified non-quantitative item comprising a psychometric ordinal rank for measuring respondent positions along the continuum for the first trait, the unverified non-quantitative item further comprising a prompt and a plurality of non-quantitative response choices for which there is no inherent a priori natural order relative to the first trait; receiving from a plurality of users, through at least one input device, a plurality of responses to the verified quantitative item and to the plurality of unverified non-quantitative items; and assessing, using at least one processor, psychometric acceptability of the unverified non-quantitative item based at least in part on the plurality of responses to the unverified non- quantitative item relative to the plurality of responses to the verified quantitative item. 2 Appeal2017-006656 Application 13/659,260 REJECTION The Examiner made the following rejection: Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to unpatentable subject matter. Ans. 4. ANALYSIS As an initial matter, Appellant argues that the Examiner has issued "what amounts to, a new grounds of rejection" because the Examiner has included "new analysis" of the basis for the rejection. Reply Br. 2. Such matters are not appealable to the Board and should be handled by petition. As such, this issue is not properly before us and we will not address it. As to the rejection itself, Appellant spends significant time arguing that the rejection is improper because the claims recite a "unique and novel combination of steps" (Reply Br. 6) and that the invention does not seek to tie up all methodologies of the alleged abstract idea (Reply Br. 7). While these arguments may be correct, we agree with the Examiner that neither is dispositive of the issue as to whether the claims comprise eligible subject matter. See, e.g., Ans. 9, 11-13. Appellant has not persuaded us that the Examiner erred in finding that the claims are directed to an abstract idea. The main point upon which we agree with the Examiner in support of the rejection is that "there is nothing more in the claim that indicates the machine [is] doing more than generic functionality of computer processing of input for output display with the help of human interaction and hence it is considered to be not patent eligible." Ans. 14. Essentially, the claims merely automate a survey method that could be done by a human without the use of the computer. Unlike in 3 Appeal2017-006656 Application 13/659,260 McRO, Inc. v. Dandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), the use of the computer here does not produce a result that is otherwise unobtainable without using a computer. The "assessing" step is so broad and generic that it could simply comprise a user reviewing the survey responses to determine acceptability. As such, the Examiner is correct that "[t]he features here are not [a] technical solution as such to be a significantly more application of abstract idea since ... generic processing activities are carried out using standard computer peripherals." Ans. 14. It is also true that "[t ]he claim recitations are not identifying any particular improvements in technical field or another technology." Id. Despite the other factors noted above weighing in Appellant's favor, in this particular instance, Appellant cannot overcome the fact that these claims merely utilize generic computer functions to implement a method that could otherwise be performed without the use of a computer. As such, we sustain the Examiner's rejection. DECISION For the above reasons, we AFFIRM the Examiner's decision to reject claims 1-2 0. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2009). AFFIRMED 4 Copy with citationCopy as parenthetical citation