Ex Parte Thrall et al

Patent Trial and Appeal Board

Apr 25, 2018

11687273 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/687,273 03/16/2007 Grant I. Thrall
62487 7590 04/26/2018
STEPHEN H. LUTHER
ALLEN, DYER, DOPPEIT, MILBRATH & GILCHRIST, P.A.
255 S. ORANGE AVENUE, SUITE 1401
P.O. BOX 3791
ORLANDO, FL 32802-3791
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.
42238 7876
EXAMINER
GEBREMICHAEL, BRUK A
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
04/26/2018 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
Ex parte GRANT I. THRALL and M. HARRY DANIELS
Appeal2017-006492
Application 11/687,273
Technology Center 3700
Before STEVEN D.A. McCARTHY, MICHAEL L. HOELTER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 31
and 33--48. Final Act. 1 (Office Action Summary). Claims 1-30 and 32
have been canceled. Br. 13 (Claims Appendix). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal2017-006492
Application 11/687,273
THE INVENTION
The disclosed subject matter "relates to information systems." Spec.
,r 1. Claims 31 and 39 are independent. Claim 31, reproduced below, is
illustrative of the claimed subject matter:
31. A system for predicting future academic performance, the
system comprising:
a database storing a plurality of lifestyle segmentation
profiles (LSPs ), each of the LSPs being statistically correlated
with past academic performance data from a plurality of profiled
students and a plurality of geographic locations;
a processor cooperating with the database and operable to:
identify at which of the plurality of geographic
locations the at least one unprofiled student resides;
identify to which of the plurality of LSPs at least
one unprofiled student belongs based on the identified
geographic location; and
generate an academic performance indicator
statistically correlated to future academic performance of the at
least one unprofiled student dependent on the identified LSP and
the stored correlation of past academic performance data
therewith.
REJECTION 1
Claims 31 and 33--48 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to an abstract idea.
ANALYSIS
Based on Appellants' arguments (Br. 7-9), we will decide the appeal
of the claims at issue based on claim 31 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
1 "The rejection under 35 U.S.C. [§] 112, first paragraph, set forth in the
previous office action is withdrawn." Ans. 2.
2
Appeal2017-006492
Application 11/687,273
framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1293-94 (2012), and reaffirmed in Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). For the first
step, we determine whether the claims at issue are directed to a patent-
ineligible concept such as an abstract idea, law of nature, or natural
phenomenon. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1296-
97). If so, then "we consider the elements of each claim both individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application" of the otherwise patent-ineligible concept. Id. (quoting Mayo,
132 S. Ct. at 1298, 1297). The Court has described this second step "as a
search for an inventive concept-i.e., an element or combination of elements
that is sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the ineligible concept itself." Id. ( citing Mayo, 132
S. Ct. at 1294 (internal quotation marks and alterations omitted)).
In the present case, and regarding the first step in the Alice
framework, the Examiner determines "The claim( s) is/ are directed to the
abstract idea of a method of organizing human activities, or an idea of
itself."2 Final Act. 2. Regarding the second step, the Examiner determines,
"The additional element( s) or combination of elements in the claim( s) other
than the abstract idea per se amount( s) to no more than recitation of generic
computer structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities previously known
2 The Examiner explains, "the current claimed invention can be performed,
for example, by a human using a pen and paper ( which is one of the tests
to prove whether a given claim is directed to an 'abstract idea ')." Ans. 13;
see also id. at 12. Appellants do not argue that this is not the case.
3
Appeal2017-006492
Application 11/687,273
to the pertinent industry." Final Act. 2; see also id. at 3; Ans. 11-12. In
short, and as per the Examiner, "none of the current claims involves a
feature(s) that transforms the claim(s) to 'significantly more' than the
abstract idea itself." Ans. 8-9.
Appellants contend, "the second step of the § 101 analysis [] is clearly
satisfied." Br. 7. This is because claim 31 recites "[a] system for predicting
future academic performance" by correlating data and the claims "would
have no impact on academic performance indicators generated based on peer
groupings yet to be identified." Br. 8. In other words, "the claims would not
monopolize the act of correlation per se" and "the claims do not prevent
others from studying the correlation, or utilizing the correlation for purposes
other than the generation of academic performance indicators." Br. 8; see
also id. at 9.
The Examiner explains, "the courts do not use preemption as a stand-
alone test for eligibility." Ans. 10. There is merit to the Examiner's
explanation because we are instructed that "the exclusion applies if a claim
involves a natural law or phenomenon or abstract idea, even if the particular
natural law or phenomenon or abstract idea at issue is narrow." buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014) (citing Mayo, 132
S. Ct. at 1303); see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015) (holding that "[w]hile preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility"). Accordingly, Appellants'
arguments on this point are not persuasive of Examiner error.
Appellants further contend that claim 31 satisfies "the next step of the
§ 101 analysis - because a system that specifically requires a database [] and
a processor [] recite significantly more than 'making one or more
4
Appeal2017-006492
Application 11/687,273
predictions.'" Br. 9 (referencing Final Act. 3). However, the Examiner has
explained that this additional recitation to "a database" and "a processor"
"amount(s) to no more than recitation of generic computer structure that
serves to perform generic computer functions." Final Act. 2; see also Ans.
11-12. As such, the Examiner explains, "these additional claim element(s)
do not provide meaningful limitation(s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the claim( s) amounts
to significantly more than the abstract idea itself." Final Act. 3; see also
Ans. 8-9, 11-12.
Our reviewing court has provided instruction that " [ u] sing a computer
to accelerate an ineligible mental process does not make that process patent-
eligible." Bancorp Servs. L.L. C. v. Sun Life Assur. Co. of Canada (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012). As also instructed, claims involving
data collection, analysis, and publication 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 certain
results of the collection and analysis" are "a familiar class of claims
'directed to' a patent ineligible concept"). Similarly, we are informed that
the "mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at
2358. In other words, adding the words "apply it with a computer" cannot
convert a patent-ineligible abstract idea into a patent-eligible invention.
Alice, 134 S. Ct. at 2358. Accordingly, Appellants' arguments on this point
are not persuasive of Examiner error.
Appellants further "submit[] that the correlation discovered by the
present inventors is more in the line of a natural phenomenon than an
abstract idea. Br. 8; see also id. at 9. Even though Appellants distinguish
5
Appeal2017-006492
Application 11/687,273
this statement (see Br. 8), the Examiner clearly states, "the judicial exception
'natural phenomena' does not apply to the current claimed invention." Ans.
10. Hence we do not pursue Appellants' self-characterization of the claims
on appeal as "more in the line of a natural phenomenon." Br. 8.
For the above reasons, we sustain the Examiner's rejection of claims
31 and 33--48 under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter.
DECISION
We affirm the Examiner's rejection of claims 31 and 33--48.
No time period for taking any subsequent action in connection with
this appeal may be extended as set forth in 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
6