Ex Parte Thomas

Patent Trial and Appeal Board

May 31, 2018

13659260 (P.T.A.B. May. 31, 2018)

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.
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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
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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
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