Ex Parte Watkins

Patent Trial and Appeal Board

Aug 28, 2017

13425627 (P.T.A.B. Aug. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
5218-204 5031
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
13/425,627 03/21/2012
20792 7590 0!
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
Robert Todd Watkins JR.
08/28/2017 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 ROBERT TODD WATKINS JR.1
Appeal 2016-005296
Application 13/425,627
Technology Center 3700
Before DANIEL S. SONG, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s
rejection of claims 1, 3—5, 7—14, and 33—40 in the present application (App.
Br. 1). Claims 2, 6, and 15—32 have been canceled (App. Br., Claims
App’x). We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
1 The real party in interest is East Carolina University (Appeal Brief
(hereinafter “App. Br.”) 1).
Appeal 2016-005296
Application 13/425,627
The claimed invention is a method for collecting, reporting, and
generating normalized educational outcome summaries (Spec., Abstract).
Independent claim 1 reads as follows (App. Br. 15, Claims App’x, italics
added):
1. A method for providing data for evaluating student
competency, comprising:
generating an evaluation grid for at least one student, the
grid including a plurality of different microcompetencies, a
plurality of scores that are associated with corresponding ones of
the plurality of different microcompetencies, the plurality of
scores corresponding to at least one didactic event, at least one
experiential event, and at least one discussion event,
wherein generating the evaluation grid is performed using
at least one computer processor,
wherein ones of the plurality of scores for corresponding
ones of the plurality of different microcompetencies are relative
educational value (RVU) scores,
wherein each of the at least one didactic event, the at least
one experiential event and the at least one discussion event that
is used to generate a respective score is associated with a
metadata code identifying a topic code corresponding to ones of
the plurality of different microcompetencies and RVU scores,
wherein generating the evaluation grid is performed using
the metadata codes,
wherein the RVU scores from each event are time-
normalized scores, and
wherein the didactic and experiential RVU scores are
based on binary characterizations of test and experience events.
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Independent claim 33 includes all of the limitations of claim 1, but
further recites the following additional limitations (App. Br. 17—18, Claims
App’x):
receiving, into the evaluation grid from an evaluator, an
input that includes data corresponding to completion of an
individual discussion element;
receiving, into the evaluation grid, a verified summative
report that includes verification that appropriate points are
awarded for a corresponding competency;
transmitting RVU scores for didactic testing events that
are correlated to students and microcompetencies, to a
corresponding student;
transmitting RVU scores for experiential events that are
correlated to students and microcompetencies, to the
corresponding student;
transmitting RVU scores for discussion events that are
correlated to students and microcompetencies, to the
corresponding student;
generating, for respective ones of a plurality of students,
cumulative analysis reports; and sending the cumulative analysis
reports to respective ones of the plurality of students,
wherein the evaluation grid includes an interactive grid
that includes elements that can be selected by a user and is
configured to reveal underlying data that supports the elements
responsive to corresponding ones of the elements being selected
by the user.
The Examiner rejects claims 1, 3—5, 7—14, and 33—40 as unpatentable
under 35 U.S.C. § 101 as being directed to a judicial exception, i.e., directed
to patent ineligible subject matter (Non-final Rejection (hereinafter
“Rejection”) 2).
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Application 13/425,627
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner rejects the claims on appeal finding that the subject
matter of independent claims 1 and 33 are directed to an abstract idea (Rej.
2). The Supreme Court has established a two part test for determining
whether a claim recites patent-eligible subject matter. Alice Corp. Pty. Ltd.
v. CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014). First, the claims are
examined to determine whether they are directed to a patent ineligible
concept such as an abstract idea. Id. If so, the claim elements are
considered both individually and as an ordered combination to determine
whether they transform the claim into a patent-eligible application. Id.
The Examiner finds that
These [claimed] methods of recording student performance data
into a grid and analyzing the data to produce scores and reports
are methods of organizing human activities consisting of a
series of mental steps that could be performed by a human, such
as using a pen and paper, and are therefore abstract [] ideas.
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements or combination of elements in
the claims other than the abstract idea per se amount to no more
than: requiring no more than a generic computer to perform
generic computer functions that are well-understood, routine
and conventional activities previously known to the industry.
(Rej. 2—3, emphasis added; see also Ans. 3).
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Application 13/425,627
The Examiner also finds that “the use of metadata codes as data
identifiers in computer system represents well-understood, routine and
conventional activities previously known to the industry.” (Rej. 3).
Accordingly, the Examiner summarizes that
Viewed as a whole, these additional claim elements do not
provide meaningful limitations to transform the abstract idea
into a patent eligible application of the abstract idea such that
the claims amount to significantly more than the abstract idea
itself.
(Rej. 3).
Claim 1
We agree with the Examiner’s finding that a “method for providing
data for evaluating student competency” as recited in claim 1 is directed to
an abstract idea and a method for organizing a human activity. Alice, 134 S.
Ct. at 2355. Moreover, we also agree with the Examiner that the additional
claim limitations do not transform the abstract idea in to a patent eligible
subject matter. Id.
The Appellant argues that the method steps “cannot be performed in
the human mind, or by a human using a pen and paper” (App. Br. 9), and
In contrast with organizing human activities, the method of
Claim 1 is directed to providing a tool that is a technical
solution to the problem of evaluating student performance
across distinct and dissimilar evaluation activities (didactic,
experiential, and discussion) in a consistent, standardized and
interactive manner. Thus, while the evaluation of student
learning activities may be “human”, these evaluations of the
human activities are merely inputs to the tool that solves the
problem.
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Application 13/425,627
(App. Br. 7).
However, legal precedent from the Federal Circuit which applies Alice
informs us that claims directed to subject matter similar to the method of
claim 1 is an abstract idea. For example, in Intellectual Ventures ILLC v.
Capital One Bank (USA), the patent at issue claimed a method “relate[d] to
budgeting,” and recited, inter alia, “storing, in a database, a profile keyed to
a user identity and containing one or more user-selected categories to track
transactions associated with said user identity, wherein individual user-
selected categories include a user pre-set limit,” and causing communication
of “transaction summary data in the database for at least one of the one or
more user-selected categories containing said [] at least one user-selected
category’s user pre-set limit.” Intellectual Ventures, 792 F.3d 1363, 1367
(Fed. Cir. 2016).
In Intellectual Ventures, the court found that the claimed method was
directed to methods of organizing human activity, that is, to an abstract idea
of “tracking financial transactions to determine whether they exceed a pre­
set spending limit (i.e., budgeting).” Id.', see also 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”).
The invention of claim 1 is not meaningfully different than these
precedents, and as the Examiner finds, is directed to a method of organizing
human activity and an abstract idea of recording student performance and
competency data and information. The Appellant does not provide any
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persuasive evidence or reasoning, which persuades us that the method of
claim 1 is so distinguished from the subject matter of the noted legal
precedent. Accordingly, we agree with the Examiner that the claimed
methods are “akin to methods for information handling that have been
identified by the courts as abstract idea, such as using categories to organize,
store and transmit information, and data recognition and storage.” (Ans. 6;
see also Ans. 7).
The Appellant also “disagrees with the Office Action allegation that
the claim[] do[es] not amount to significantly more than an abstract idea” of
“providing data for evaluating student competency,” because the claimed
method recites the step of “generating an evaluation grid,” which includes “a
number of specific parameters.” (App. Br. 6; see also Reply Br. 2). These
parameters are argued as consisting of
a plurality of different microcompetencies, a plurality of scores
that are associated with corresponding ones of the plurality of
different microcompetencies, the plurality of scores
corresponding to at least one didactic event, at least one
experiential event, and at least one discussion event.
(App. Br. 6—7).
The Appellant also argues that the Examiner “disregards the
fundamental computer interaction required to perform operations recited
therein,” and that “generating the evaluation grid goes well-beyond merely
providing data for evaluating student competency using a technological
environment (e.g., computer).” (App. Br. 7; see also Reply Br. 2).
However, as the Examiner correctly notes (Ans. 7), a computer
processor is merely recited with respect to generating an evaluation grid with
microcompetencies, and we agree with the Examiner that “the inclusion of
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the processor appears to merely be an attempt to direct the claimed abstract
idea to a particular technological area, not a fundamental computer
interaction inseparable from the abstract idea.” (Ans. 7—8). In this regard, in
applying the second portion of the test set forth in Alice, we find such
recitation of a computer processor does not transform claim 1 into a patent-
eligible claim. Alice, 134 S. Ct. at 2357 (“the method claims, which merely
require generic computer implementation, fail to transform that abstract idea
into a patent-eligible invention.”); Intellectual Ventures, 792 F.3d at 1368
(“Instructing one to ‘apply’ an abstract idea and reciting no more than
generic computer elements performing generic computer tasks does not
make an abstract idea patent-eligible.”). The recited method steps,
individually, or as part of the claimed ordered combination, fail to transform
the abstract idea of providing data for evaluating student competency into
patent eligible subject matter.
The Appellant further asserts that the recitations of claim 1 are similar
to an example of a patent eligible invention provided by the Patent Office for
a “Graphical User Interface for Relocating Obscured Textual Information.”
(App. Br. 9-10, citing Example 23 of the July 2015 Update Appendix 1,
Examples, Page 7). However, notwithstanding the fact that the Appellant is
relying upon a hypothetical example instead of legal precedent, the
Examiner is also correct that the example is “eligible because they addressed
a problem specifically arising in graphical user interface.” (Ans. 8).
Specifically, the Example clearly sets forth that “the claimed method is
necessarily rooted in computer technology to overcome a problem
specifically arising in graphical user interfaces.” (July 2015 Update
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Appendix 1, Examples, Page 9). The presently claimed method is not
analogous.
The Appellant further asserts that the Examiner’s Answer appears to
be changing the analysis from a method of organizing human activities to
“an abstract idea in the form of an idea itself.” (Reply Br. 2). However, as
set forth above, the Examiner’s rejection is clear that “[tjhese methods of
recording student performance data into a grid and analyzing the data to
produce scores and reports are methods of organizing human activities
consisting of a series of mental steps that could be performed by a human,
such as using a pen and paper, and are therefore abstract [] ideas. ” (Rej.
2—3, emphasis added). In that regard, ideas can also fall within more than
one category, including organizing human activity, as these concepts have
common characteristics (see Patent Office’s July 2015 Update: Subject
Matter Eligibility, pg. 5,1 C).
Claim 33
The Appellant directs our attention to numerous limitations of claim
33 (additional to the limitations of claim 1) including various steps of
“receiving,” “transmitting,” “generating,” and “sending.” (App. Br. 10-11).
According to the Appellant, “[sjuch operations, individually and in
aggregate, are not merely generic computer functions and are not methods of
organizing human behavior.” (App. Br. 11). However, we agree with the
Examiner that this argument is unpersuasive because only the generation of
the evaluation grid is recited to be performed via a computer processor (Ans.
8), and “represents a series of mental steps.” (Ans. 4; see also Rej. 4).
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Moreover, we further agree with the Examiner that even if these
additional limitations were construed to be performed by the computer
processor, the additional steps
represent[] routine and conventional computer functions. These
functions do not appear to transform the computer into any kind
of particular special-purpose computer, do not represent an
improvement to another technology or technological area, and
do not represent an improvement to the functioning of the
computer itself.
(Rej. 4 ; see also Ans. 8). See also Alice, 134 S. Ct. at 2357; Intellectual
Ventures, 792 F.3d at 1368.
Claims 34—40
The Appellant also directs our attention to each of the limitations of
these claims that ultimately depend from independent claim 1 (App. Br.
11—12). However, the Appellant’s assertion that the limitations of these
claims are “well beyond the alleged abstract idea” is unpersuasive because
the Appellant provides very little evidence or argument in support (App. Br.
11—13). In addition, as to claims 34—37, we agree with the Examiner that
“these claims appear to recite limitations similar in nature to the newly
added limitations in claim 33 and for the same reasons are not sufficient to
amount to significantly more than the judicial exception.” (Rej. 4). As to
claims 3 8—40, we also agree with the Examiner that the recited steps “are
routine and conventional] and therefore do not transform the computer into
any kind of particular special-purpose computer, do not represent an
improvement to a particular technology or technological area, and do not
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Application 13/425,627
represent an improvement to the functioning of the computer itself.” (Rej.
5).
Claims 4, 10, and 38
The Appellant separately argues the recited steps of dependent claims
4, 10, and 38 are not abstract, are not an idea itself, cannot be performed by
the human mind or humans with pen and paper, are not mathematical
algorithms, and may not be characterized as organizing human activity
(Reply Br. 3—4). Claim 4 recites “wherein the grid is automatically
electronically updated,” claim 10 recites “displaying the grid with cells” that
are colored based on “a defined status,” and claim 38 recites receiving a
request for a cumulative analysis report, and “sending” report in response.
The Appellant’s arguments are unpersuasive. Again, the limitations of these
claims steps are routine and conventional, and do not transform a computer
processor into any kind of particular special-purpose computer, do not
represent an improvement to a particular technology or technological area,
and do not represent an improvement to the functioning of the computer
itself. Alice, 134 S. Ct. at 2357; Intellectual Ventures, 792 F.3d at 1368.
CONCLUSION
In view of the above considerations, the Examiner’s rejection of
claims 1, 3—5, 7—14, and 33—40 is AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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