International Business Machines Corporation

Patent Trials and Appeals Board

Sep 17, 2020

2020001379 (P.T.A.B. Sep. 17, 2020)

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.
15/182,182 06/14/2016 Tsz S. Cheng END920160033US1
(011U)
7995
11445 7590 09/17/2020
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
SKAARUP, JASON M
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSZ S. CHENG, STEPHANIE DE LA FUENTE, and
CHARLET N. GIVENS
Appeal 2020-001379
Application 15/182,182
Technology Center 3700
Before DANIEL S. SONG, MICHELLE R. OSINSKI, and
CARL M. DEFRANCO, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 2.
Appeal 2020-001379
Application 15/182,182
2
CLAIMED SUBJECT MATTER
The claims are directed to a method for teaching plan optimization.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for teaching plan optimization, the method
comprising:
loading a teaching plan into memory of a computer;
comparing the loaded teaching plan to a set of existing
teaching plans disposed in fixed storage of the computer to
identify an alternate teaching plan utilizing a presentation format
that differs from a presentation format of the loaded teaching
plan;
monitoring by the computer a class response to the loaded
teaching plan in order to determine an effectiveness of the loaded
teaching plan;
identifying a portion of the class demonstrating a
determined effectiveness of the loaded teaching plan below a
threshold value; and,
computing and displaying a proportional sharing of
presentation of both the loaded teaching plan and the alternative
teaching plan to the class based upon the identified portion of the
class demonstrating the determined effectiveness of the loaded
teaching plan below the threshold value.
Appeal Br. 12, Claims App.
OPINION
The Examiner rejects claims 1–20 as being directed to patent
ineligible subject matter under a judicial exception to 35 U.S.C. § 101. Final
Act. 5. Specifically, the Examiner finds that these claims are directed to an
abstract idea, without significantly more, that is not integrated into a
practical application. Final Act. 5. The Appellant disagrees with the
Examiner’s determination, and argues all of the claims together. Thus, we
select claim 1 as representative, and all of the claims stand or fall with
Appeal 2020-001379
Application 15/182,182
3
claim 1. We agree with the Examiner’s rejection for the reasons addressed
infra.
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
According to the Supreme Court’s framework, we must first determine
whether the claims at issue are directed to one of those concepts. Id.
If so, we must secondly “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.” Id. “A claim that recites an abstract idea must include
‘additional features’ to ensure ‘that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea].’” Id. at 221 (alterations in
original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic
computer implementation[] fail[s] to transform that abstract idea into a
patent-eligible invention.” Id.
The PTO published revised guidance on the application of Section
101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“Guidance”). The Guidance provides that in conducting
Step One analysis of the Alice framework, we first look to whether the claim
recites:
Prong 1: any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity, or mental processes); and
Prong 2: additional elements that integrate the judicial exception
into a practical application.
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4
In other words, under Prong 1, we look to whether the claim recites an
abstract idea. If the claim recites an abstract idea, we look under Prong 2 at
the claim, as a whole, and determine whether the claim is directed to the
abstract idea or, instead, is directed to a “practical application” of the
abstract idea.
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look to Step Two under the
Alice framework to determine whether the claim adds a specific limitation
individually or as an ordered combination, beyond the judicial exception that
is not “well-understood, routine, conventional” in the field, or simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. See Guidance.

Alice Step One, Guidance Step 2A, Prong 1
The Examiner determines that the claims are abstract because they
recite a mental process wherein “substantially all of these instructions or
steps could be performed in the human mind as observation, judgement or
evaluation.” Ans. 8. In that regard, the Examiner reproduces independent
claims 1, 8, and 14, underlining those limitations that could be performed in
the human mind, and explains that these limitations fall in the category of
mental processes that could be performed in the human mind as observation,
judgement or evaluation. Ans. 8–11.
Indeed, certain claims that recite collecting and analyzing information
may be treated as mental processes within the abstract idea category.
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093 (Fed. Cir.
2016). Furthermore, the court has held that:
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The focus of the asserted claims . . . is on collecting
information, analyzing it, and displaying certain results of the
collection and analysis. . . . [W]e have treated analyzing
information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir.
2016).
In this regard, the Revised Guidance provides the following guidance:
If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic
computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the
mind.
Guidance, 84 Fed. Reg. at 52 n.14; see also Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”).
Claim 1 recites the method steps of comparing a teaching plan to a set
of other existing teaching plans to identify an alternate teaching plan
utilizing a presentation format that differs from a presentation format of the
loaded teaching plan, monitoring a class response to the teaching plan in
order to determine an effectiveness of the teaching plan, identifying a
portion of the class demonstrating a determined effectiveness of the teaching
plan below a threshold, and computing a proportional sharing of presentation
of both the teaching plan and the alternative teaching plan to the class based
upon the identified portion of the class demonstrating the determined
effectiveness of the teaching plan below the threshold value. See Appeal Br.
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12, Claims App. All of these steps, including comparing, monitoring,
identifying, and computing, can be performed in the mind.
Therefore, we agree with the Examiner that claim 1 recites an abstract
idea in that it recites a mental process that “could be performed in the human
mind as observation, [judgement] or evaluation.” Ans. 8. Accordingly, we
proceed to Prong 2 under the Guidance.

Alice Step One, Guidance Step 2A, Prong 2
Under Prong 2 of the Guidance, we do not assume that claims reciting
an abstract idea are directed to patent ineligible subject matter because “[a]t
some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas.’” In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (alteration in original)
quoting Alice (quoting Mayo). Instead, “the claims are considered in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). If the claims
are not directed to an abstract idea, the inquiry ends. Guidance. If the
claims are “directed to” an abstract idea, then the inquiry proceeds to the
second step of the Alice framework. Id.
The Guidance instructs that the “directed to” issue is to be analyzed as
to whether the claims include additional elements that integrate the judicial
exception into a practical application. A claim that integrates a judicial
exception into a practical application will apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception beyond generally linking the use of the judicial exception to a
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7
particular technological environment or field of use, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.
Guidance.
The Examiner determines that the recited abstract idea is not
integrated into a practical application, and that the additional elements
“either alone or in combination, generally link the use of the above-
identified abstract idea to a particular technological environment or field of
use.” Ans. 12–13. In support thereof, the Examiner determines that the
additional elements of “memory” and “computer” recited in claim 1 “are
generically recited computer elements which do not add a meaningful
limitation to the abstract idea because they amount to simply implementing
the abstract idea on a computer.” Ans. 13. In that regard, the Examiner
finds that, in the Specification, the recited “computer components are
generically claimed to enable the collection, analysis and display of teaching
plan data by performing the basic functions of . . . receiving, processing, and
storing data,” and that “[t]he courts have recognized these functions to be
well-understood, routine, and conventional functions when claimed in a
merely generic manner.” Final Act. 6.
We agree with the Examiner for the reasons articulated. The
Appellant initially argues that the Examiner must consider the combination
of elements recited in the claims, and not just additional elements, in
determining whether the claims as a whole integrates the judicial exception
into a practical application. Appeal Br. 7. However, we do not discern error
in the Examiner’s analysis under the Guidance, which requires considering
whether the claim includes additional elements that integrate the judicial
exception into a practical application so that, as a whole, the claim is
directed to a practical application. See Guidance. As the Examiner
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determines, the additional elements recited in claim 1 “do not improve the
functioning of a computer, or any other technology or technical field,” and
do not:
serve to apply the above-identified abstract idea with, or by use
of, a particular machine, effect a transformation or apply or use
the above-identified abstract idea in some other meaningful way
beyond generally linking the use thereof to a particular
technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the
exception.
Ans. 13.
Moreover, the Appellant does not persuasively explain how the
recited additional elements, when considered in the context of claim 1 as a
whole, integrate the abstract idea into a practical application. In particular,
the Appellant argues that the Specification discloses “the claimed
improvement in the field of teaching plan presentation by ‘computing the
proportionate delivery of two different teaching plans based upon the
determined effectiveness of the loaded teaching plan falling below a
threshold’.” Reply Br. 2–3, citing Spec. ¶ 8; see also Reply Br. 4, citing
Spec. ¶ 20 (disclosing computation of blended presentation in which one
teaching plan is presented for a duration of time, and another teaching plan
is presented for another duration). The Appellant argues that the Examiner’s
finding that the Specification does not provide details regarding the manner
in which the invention accomplishes any technical improvement or solution
“is simply untrue.” Reply Br. 4.
However, the Appellant’s argument is not persuasive because the
asserted improvement is not directed to technical improvement of the recited
computer, its memory or fixed storage. Although the claim further recites
other steps that pertain to the computer, such as loading a teaching plan, and
Appeal 2020-001379
Application 15/182,182
9
displaying a proportional sharing of presentation of teaching plans, these
elements also do not improve the functioning of a computer, its memory or
fixed storage, or any other technology or technical field, such as computer
display. Rather, the asserted improvement is directed to a method of
optimizing a teaching plan, and the technology recited in claim 1 merely
implements such technology to “the field of teaching plan presentation.”
Reply Br. 2–3; see also Guidance at 55.
Accordingly, claim 1, as a whole, merely includes instructions to
implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea. Guidance at 55. The recited additional
elements do no more than generally link the use of a judicial exception to a
particular technological environment or field of use, that is, to “the field of
teaching plan presentation.” Reply Br. 2–3; see also Guidance at 55.
Therefore, in view of the above considerations, we agree with the
Examiner that claim 1 does not incorporate the recited abstract idea into a
practical application, and as a whole, is directed to a judicially excepted
subject matter. Accordingly, we proceed to the analysis under Alice, Step
Two.

Alice Step Two, Guidance Step 2B
In accordance with Alice, we now “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.” Alice, 573 U.S. at 217. The Examiner
determines that the recited additional elements, individually and in their
ordered combination, “perform purely generic computer functions.” Final
Act. 7. In that regard, the Examiner finds that when the additional elements
Appeal 2020-001379
Application 15/182,182
10
are considered individually, they “do not add significantly more because
they are simply an attempt to limit the abstract idea to a particular
technological environment. That is, the general computer elements do not
add meaningful limitations to the abstract idea because these additional
elements represent insignificant extra-solution activity.” Final Act. 7; see
also Ans. 19.
The Examiner further finds that when considered in ordered
combination, the additional elements of claim 1 “simply instruct the
practitioner to implement the concept of collecting teaching plan data
information, analyzing it and displaying certain results thereof specified at a
high level of generality in a particular technological environment.” Final
Act. 8; see also Ans. 20. Accordingly, the Examiner determines that “there
is no inventive concept sufficient to transform the claimed subject matter
into a patent-eligible application,” and that claim 1 does not “amount[] to
significantly more than the abstract idea itself.” Final Act. 8; see also Ans.
20. We agree with the Examiner.
As noted above, “merely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Alice, 573 U.S. at 221. In that regard, the Specification
discloses that the claimed method may be embodied as a computer program
that may be stored in a conventional, well-known, computer readable storage
medium or memory, and may be executed by a computer, which itself is
simply disclosed as being “general purpose computer, special purpose
computer, or other programmable data processing apparatus to produce a
machine” capable of performing the recited method. Spec. ¶¶ 29–30, 34–35.
Indeed, as the Examiner points out, the Specification “demonstrates the
well-understood, routine, conventional nature of these additional elements
Appeal 2020-001379
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11
because it describes these additional elements in a manner that indicates that
the additional elements are sufficiently well-known that the [S]pecification
does not need to describe the particulars of such additional elements to
satisfy 35 U.S.C. § 112(a).” Final Act. 6–7; see also Ans. 15–16.
The Appellant argues that claim 1 includes “additional elements that
reflects an improvement in the technical field of learning content delivery by
computing the proportionate delivery of two different teaching plans based
upon the determined effectiveness of the loaded teaching plan falling below
a threshold.” Appeal Br. 10. However, as discussed above, the additional
elements recited in claim 1, individually and in combination, “perform
purely generic computer functions.” Final Act. 7. As further explained by
the Examiner, the Specification “does not include any discussion of how the
claimed invention provides a technical improvement realized by these claims
over the prior art or any explanation of a technical problem having an
unconventional technical solution.” Ans. 14. We agree with the Examiner
that the focus of claim 1 “is unrelated to how these additional elements
function. Rather, these additional elements (e.g., memory, processor,
computer and network) function in their ordinary capacities.” Ans. 17.
The Appellant argues that “computing and displaying a proportional
sharing of presentation of both the loaded teaching plan and the alternative
teaching plan to the class based upon the identified portion of the class
demonstrating the determined effectiveness of the loaded teaching plan
below the threshold value” as recited in claim 1 is not routine, well-
understood and conventional, and this “reflects an improvement in the
technical field of learning content delivery.” Appeal Br. 10 (citing Spec.
¶ 8). The Appellant further argues that the Examiner “already has conceded
that the combination of all claimed elements of Appellants’ claims is both
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novel and non-obvious over all known prior art. Hence, it is impossible to
conclude that the foregoing claim limitations are ‘well-understood’, ‘routine’
or ‘conventional’.” Appeal Br. 10–11; see also Reply Br. 5.
However, the Appellant fails to appreciate the Examiner’s position,
which is that the additional elements recited in claim 1 are used in a routine,
conventional, and well-understood manner, not that the recited method is
routine, conventional, and well-understood. See also Ans. 20 (“When
viewed as a combination, the above-identified additional elements simply
instruct the practitioner to implement the claimed mental processes with
well-understood, routine and conventional activity (conventional hardware
as described in paragraphs 34 and 35 of Appellant’s specification) specified
at a high level of generality in a particular technological environment”
(emphasis added)). As discussed above, claim 1 recites the additional
limitations pertaining to the computer, its memory, and storage, without
particulars pertaining thereto, and “[w]hen viewed as a combination, the
above-identified additional elements simply instruct the practitioner to
implement the claimed mental processes with well-understood, routine and
conventional activity . . . specified at a high level of generality in a particular
technological environment.” Ans. 20.
In addition, as the Examiner explains, the recited step of “computing
. . . a proportional sharing of presentation of both the loaded teaching plan
and the alternative teaching plan” relied upon by the Appellant also recites
an abstract idea that can be performed in the mind, and one cannot rely on an
abstract concept to establish eligibility. Ans. 15, citing BSG Tech LLC v.
Buy Seasons, Inc. 899 F.3d, 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
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13
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”).
Moreover, the Appellant’s assertion of patentability based on novelty
and non-obviousness is unpersuasive and misdirected because novelty and
non-obviousness of a claim is not dispositive as to its patent eligibility.
Indeed, even if the method of claim 1 is “[g]roundbreaking, innovative, or
even brilliant,” that, in and of itself, is not sufficient to establish eligibility.
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013)). To the contrary, “a claim for a new abstract idea is still an
abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016).
Therefore, we agree with the Examiner that the elements of claim 1,
when “evaluated both individually and in combination, . . . none of these
additional elements provide[] significantly more than the abstract idea
itself.” Ans. 19. Indeed, the additional elements simply append well-
understood, routine, conventional elements, specified at a high level of
generality, to the judicial exception in an attempt to limit the abstract idea to
a particular technological environment, and fail to transform the nature of
the claim into a patent-eligible application. We likewise agree with the
Examiner that:
Because the claims simply instruct the practitioner to
implement the abstract idea with routine, conventional activity
and using the above described computer components as tools to
execute the claimed process, these additional claim elements,
when viewed as whole, 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.
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Final Act. 8 (citing BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016); DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
Thus, in view of the above considerations, we affirm the Examiner’s
rejection of claim 1. Claims 2–20 fall with claim 1.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED