Ex Parte WANG et al

Patent Trial and Appeal Board

Sep 25, 2018

13731996 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/731,996 12/31/2012
97149 7590 09/27/2018
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
FIRST NAMED INVENTOR
Jun WANG
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.
Fl423.10065US01 6094
EXAMINER
SAINT-VIL, EDDY
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
docket@mabr.com
info@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN WANG and KAN JI UCHINO 1
Appeal2018-000278
Application 13/731,996
Technology Center 3700
Before JAMES P. CAL VE, SCOTT C. MOORE, and LEE L. STEPINA,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeals under 35 U.S.C. § 134(a) from the Final Office
Action finally rejecting claims 1--4 and 6-24 as directed to patent-ineligible
subject matter under the judicial exception to 35 U.S.C. § 101. Final Act. 2-
19; Appeal Br. 3. Claim 5 is cancelled. Appeal Br. 3. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Fujitsu Limited is identified as the real party in interest and the applicant
pursuant to 37 C.F.R. § 1.46. See Appeal Br. 3.
Appeal 2018-000278
Application 13/731,996
CLAIMED SUBJECT MATTER
Appellants claim a method and system to improve access to online
learning programs and courses that are available to the public. Spec. ,r 2.
Claims 1 and 13 are independent, with claim 1 reproduced below.
1. A method of automatically ranking and
recommending electronically stored open education materials,
the method comprising:
receiving a query from a user;
calculating a content similarity measurement for each
learning material of a plurality of electronically stored learning
materials with respect to the query and based on the query, the
plurality of learning materials accessible online at websites
hosted by one or more third party educational institution web
servers communicatively coupled to the Internet;
fetching more than one of the plurality of learning
materials from the websites hosted by the one or more third
party educational institution web servers;
extracting a plurality of learning-specific features from
the plurality of learning materials, wherein the plurality of
learning materials include a first learning material and the
plurality of learning-specific features include an author or
coauthor of the first learning material;
calculating one or more additional measurements for
each learning material of the plurality of learning materials
based on the extracted plurality of learning-specific features,
wherein:
the one or more additional measurements are different
than the content similarity measurement and comprise an
academic credit measurement that depends on both a
productivity of an individual associated with a
corresponding one of the plurality of learning materials and
a match between the corresponding one of the plurality of
learning materials and published works of the individual;
a first academic credit measurement calculated for the
first learning material depends on a productivity of the
author or coauthor of the first learning material; and
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Application 13/731,996
the first academic credit measurement calculated for
the first learning material also depends on an average
content similarity between the first learning material and all
published works of the author or coauthor of the first
learning material;
ranking each of the plurality of learning materials based
on both the content similarity measurement and the one or more
additional measurements; and
outputting to the user portions of more than one of the
plurality of learning materials in a single view based on their
respective rankings in order to provide the user effectively
ranked learning materials from which to select helpful learning
materials from the plurality of learning materials, wherein each
of the portions are a subset of a respective learning material.
Appeal Br. 17-18 (Claims App.).
ANALYSIS
We analyze patent-eligibility under the two-step framework of Alice
Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S.Ct. 2347, 2355 (2014) and Mayo
Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012). First,
we consider whether the claims are directed to a patent-ineligible concept
such as a law of nature, natural phenomena, or abstract idea. Alice, 134
S.Ct. at 2355. If so, we consider claim elements individually and as ordered
combinations to determine whether additional elements transform the claims
into a patent-eligible application. Id. This search for an "inventive concept"
in the second step searches for an element or a combination of elements
"sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself." Id. (quoting Mayo, 566
U.S. at 72). Preliminarily, we also find that the claimed method and system
fall within a statutory category of section 101. See Aatrix Software, Inc. v.
Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).
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Appeal 2018-000278
Application 13/731,996
Alice Step One
Appellants argue claims 1--4 and 6-24 as a group and limit arguments
to features recited in claim 1. Appeal Br. 6-16. We thus select claim 1 as
representative, with claims 2--4 and 6-24 standing or falling with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that claim 1 is directed to
the abstract ideas of (1) collecting and comparing known information via
receiving a query, extracting learning specific features, ranking learning
materials, and fetching learning materials from websites, (2) obtaining and
comparing intangible data via receiving query, extracting learning specific
features, and ranking learning materials, and (3) organizing information
through mathematical correlations. Final Act. 5. We agree.
Our reviewing court has held that such claims directed to collecting,
analyzing and manipulating, and displaying information recite abstract ideas.
E.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016) ( collecting information, even limited to particular content, and
analyzing it by steps people go through in their minds or by mathematical
algorithms are abstract ideas and merely presenting the results is abstract);
Move, Inc. v. Real Estate Alliance Ltd., 721 F. App'x 950, 954 (Fed. Cir.
2018) (non-precedential) ( claims for collection, organization, manipulation,
or display of data are directed to abstract ideas); SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("The focus of the claims ... is
on selecting certain information, analyzing it using mathematical techniques,
and reporting or displaying the results of the analysis. That is all abstract.");
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (claims were directed to abstract idea
of data collection, recognition, and storage, which are well-known and
performed by humans).
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Application 13/731,996
Appellants disclose various mathematical formulas for calculating the
claimed content similarity and the one or more additional measurements.
Spec. ,r,r 40, 50, 52, 53, 60, and 61. Some of the formulas are recited in the
dependent claims, which Appellants do not argue separately. See Appeal Br.
18-19 (claims 4, 6, 7, 9, 11, and 12), 21-22 (claims 16, 17, 19, and 20). The
recitation of specific formulas in claims dependent from claim 1 creates a
presumption that claim 1 does not include such formulas, i.e., the claimed
calculations can be performed by other means. See Inline Plastics Corp. v.
EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) ("[t]he presence of a
dependent claim that adds a particular limitation gives rise to a presumption
that the limitation in question is not present in the independent claim.");
Seachange Int'!, Inc. v. C-COR Inc., 413 F.3d 1361, 1368-69 (Fed. Cir.
2005) (same). Therefore, persons can perform such calculations in their
mind, contrary to Appellants' attorney arguments. See CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (claim 3 does
not limit its scope to any particular algorithm); Appeal Br. 8; Reply Br. 5.
Even so, calculating according to certain rules or formulas is an
abstract idea, particularly at the level of generality recited in claim 1.
The claims here are ineligible because their innovation is an
innovation in ineligible subject matter. Their subject is nothing
but a series of mathematical calculations based on selected
information and the presentation of the results of those
calculations (in the plot of a probability distribution function).
No matter how much of an advance in the finance field the
claims recite, the advance lies entirely in the realm of abstract
ideas, with no plausibly alleged innovation in the nonabstract
application realm. An advance of that nature is ineligible for
patenting.
SAP Am., 898 F.3d at 1163.
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Application 13/731,996
Other decisions reach similar results. Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) ("Without
additional limitations, a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible."); Accenture Global Services, GmbH v. Guidewire Software,
Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (generating tasks based on rules
to be completed upon the occurrence of an event is an abstract idea).
Reciting user queries that are used to fetch information from websites
is an abstract idea when recited at such a level of generality as in claim 1.
First, the claims at issue here are directed to an abstract idea.
We have held that "tailoring of content based on information
about the user-such as where the user lives or what time of
day the user views the content-is an abstract idea. . . . Here,
the claims are directed to selecting and sorting information by
user interest or subject matter, a longstanding activity of
libraries and other human enterprises.
Evolutionary Intelligence LLC v. Sprint Nextel Corp., 677 F. App'x 679, 680
(Fed. Cir. 2017) (non-precedential); see also Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (claims to a media
managing system that maintains a library of content and instructions that are
operable when executed by a handheld wireless device to request streaming
delivery of the content with network based delivery to retrieve and stream
the requested content merely describe a desired outcome or function without
confining the claim to a particular solution to an identified problem and thus
confirms the claim is directed to an abstract idea); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)
( customizing web page content based on navigation history or information
known about a customer is an abstract idea).
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The claimed ranking that results from the generalized collection,
calculations, and analysis also is directed to an abstract idea because it
merely displays or provides the results of those abstract concepts. Elec.
Power, 830 F.3d at 1354. Claim 1 calculates a content similarity based on a
user query and additional measurements based on a first academic credit,
which measures the "productivity of the author or coauthor" and "average
content similarity," i.e., how similar the learning material content is to the
published content of the author. Appellants acknowledge that ranking
mechanisms exist for learning materials for "closed learning management
systems" instead of online open education programs. Spec. ,r 17. We are
not persuaded that application of the claimed collection, calculations, and
display features to learning materials of an online open system provides a
particular solution to a problem as Appellants argue. Appeal Br. 13-14.
Instead, claim 1 recites the application of the abstract idea in a particular
environment, which does not make the idea any less abstract. In other
words, nothing in claim 1 pertains to innovations or details related to an
online environment. A user query is received and a content similarity is
calculated "based on the query." No particulars are recited. Multiple
learning materials are fetched, but claim 1 does not specify how materials
are fetched based on the calculated content similarity. Materials are ranked
"based on both the content similarity measurement and the one or more
additional measurements" without specifying how the actual ranking is done
or whether the ranking yields a more effective result. See Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016)
(receiving e-mail, other data file identifiers, characterizing e-mail based on
the identifiers, and communicating this characterization is an abstract idea).
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Appeal 2018-000278
Application 13/731,996
The decisions in DDR and McRO illustrate the distinction between the
abstract idea recited in claim 1 and patent-eligible subject matter. DDR dealt
with a computer- and Internet-specific problem of websites losing visitors to
third-party merchants when the visitors clicked on the third-party merchant's
advertisement on the host site. DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1248 (Fed. Cir. 2014). The claimed system generated a new,
composite web page that retained the look and feel of the host website while
displaying product information of the third-party merchant. Id. at 1248--49.
Here, claim 1 recites the abstract idea of collecting existing learning
materials from websites after calculating content similarity based on a user
query, extracting "learning-specific features" (author) from the materials,
and calculating additional measurements. All of these steps are recited at
such a high level of generality as to constitute an abstract idea. "Information
as such is an intangible" (Elec. Power, 830 F.3d at 1353) particularly in the
manner it is collected, analyzed, and displayed in claim 1. Web browsers
and web bots perform such activities, as do reference librarians.
Similarly, in McRO, the claims were directed to 3-D models to depict
facial expressions of animated characters during speech. See McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1303---04 (Fed. Cir. 2016).
The claims in McRO were directed to the creation of something
physical-namely, the display of "lip synchronization and
facial expressions" of animated characters on screens for
viewing by human eyes. Id. at 1313. The claimed
improvement was to how the physical display operated (to
produce better quality images), unlike ( what is present here) a
claimed improvement in a mathematical technique with no
improved display mechanism.
SAP Am., 898 F.3d at 1167 (quoting McRO at 1313).
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Application 13/731,996
Alice Step Two
Claim 1 recites steps/rules/algorithms that process information to
produce more information for display. Even if such steps/rules/algorithms
represent an advance in finding educational materials, claim 1 recites these
steps at such a high level of generality as to be entirely in the realm of an
abstract idea, which is ineligible for patenting. See SAP Am., 898 F.3d at
1163. In contrast, DDR claimed a new arrangement and functionality of
web pages and computer servers that was concrete, tangible, and particular
to the Internet. No similar new arrangement or result is claimed here.
We are not persuaded that the claimed method is rooted in Internet
technology as in DDR. See Appeal Br. 9. Unlike the situation in DDR,
claim 1 does not recite any feature of a query, fetching, or calculating that is
unique to the Internet, Internet search engines, web bots, or search queries
generally. Claim 1 recites an abstract concept of collecting, analyzing,
displaying information that happens to pertain to "learning material" on the
Internet, which is a particular environment for application of the abstract
idea. It is not a computer-specific problem or solution. Appeal Br. 9--10.
We also agree with the Examiner that claiming a plurality of learning
materials accessible online at websites hosted by educational institution web
servers communicatively coupled to the Internet does not limit the abstract
idea in a meaningful way under step two of Alice. Final Act. 9. There is no
indication that the web servers require information to be accessed differently
or that claim 1 recites an innovative way of doing so that is unique to the
Internet or educational web servers or educational learning materials. To
apply the abstract idea on generic computers/servers does not confer patent-
eligibility. See Intellectual Ventures Iv. Capitol One, 792 F.3d at 1370.
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Requiring the use of a "software" "brain" "tasked with tailoring
information and providing it to the user" provides no additional
limitation beyond applying an abstract idea, restricted to the
Internet, on a generic computer.
Id. at 1371.
DDR claimed hybrid web pages created by a third party outsourcer
and server. McRO claimed concrete, tangible lip synchronized animated
characters. In contrast, claim 1 collects (fetches) in a generalized way
learning materials, extracts information from the fetched materials, performs
calculations, and displays the materials in "respective rankings." Providing
"effectively ranked learning materials" says nothing about the quality or the
innovative nature of ranking or the search methods or computers or network
technologies sufficient to make the abstract idea of claim 1 patent-eligible.
Performing more abstract steps with information is still an abstract idea.
In accordance with ... Alice . .. , this court has ruled many
times that "such invocations of computers and networks that are
not even arguably inventive are insufficient to pass the test of
an inventive concept in the application of an abstract idea," ...
Indeed, we think it fair to say that an invocation of already-
available computers that are not themselves plausibly asserted
to be an advance, for use in carrying out improved
mathematical calculations, amounts to a recitation of what is
"well understood, routine, [and] conventional.
See SAP Am., 898 F.3d at 1170.
Appellants' arguments regarding preemption (Appeal Br. 14--15;
Reply Br. 5) are resolved by our § 101 analysis. Ariosa Diagnostics, Inc. v.
Sequenom Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (where patent claims are deemed patent ineligible, "preemption
concerns are fully addressed and made moot").
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Appellants' argument that dependent claims recite novel metrics or
tools to achieve a result that elevates the abstract idea to patent-eligible
subject matter (Reply Br. 7-8) is raised for the first time in the Reply Brief
and not in response to arguments or findings presented in the Answer and is
therefore untimely. See 37 C.F.R. § 41.41 (b )(2).
Thus, we sustain the rejection of claims 1--4 and 6-24.
DECISION
We affirm the rejection of claims 1--4 and 6-24 as directed to patent-
ineligible subject matter under the judicial exception to 35 U.S.C. § 101.
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).
AFFIRMED
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