International Business Machines Corporation

Patent Trials and Appeals Board

Apr 28, 2021

2020005995 (P.T.A.B. Apr. 28, 2021)

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.
15/820,989 11/22/2017 Kelly A Argyros SVL920170083US1_8150-0893 8156
112978 7590 04/28/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
WAESCO, JOSEPH M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
04/28/2021 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KELLY A. ARGYROS, DONNA K. BYRON,
LAKSHMINARAYANAN KRISHNAMURTHY, and
JOAN W. TOMLINSON
__________

Appeal 2020-005995
Application 15/820,989
Technology Center 3600
____________

Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellant1 has filed a Request for Rehearing (“Request”) of the
Decision on Appeal (mailed Jan. 27, 2021; “Decision”) pursuant to
37 C.F.R. § 41.52(a)(4).2 Request 1 (“Appellants will argue that the
Decision contains an undesignated new ground of rejection.”).
In the Decision, the Board

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ l.42(a). Appellant identifies IBM Corporation as the real party in interest.
Appeal Br. 1.
2 “New arguments that the Board's decision contains an undesignated new
ground of rejection are permitted.”
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1. affirmed the rejection of claims 1–21 under 35 U.S.C. § 101 as
being directed to judicially–excepted subject matter without
significantly more and
2. reversed the § 103 rejections of claims 1–5, 8–12, and 15–19 and
6, 7, 13, 14, 20, and 21 as being unpatentable over the
combinations of Monk and Bassin and Monk, Bassin, and Butler,
respectively.
The Request concerns only the § 101 rejection.

DISCUSSION
We have carefully reviewed the arguments set forth in the Request
and for the following reasons we are persuaded to denominate the
affirmance of the § 101 rejection in the Decision as a new ground of
rejection.
It is true, as Appellant argues, that the Board presented more analysis
than the Examiner. Request 4.
Appellant points to our claim construction analysis – something the
Examiner did not provide. Id.
That alone is an insufficient basis for arguing that the thrust of our
decision differs substantially from that of the Examiner. This is so because
“claim construction is not an inviolable prerequisite to a validity
determination under § 101.” Bancorp Servs., L.L.C. v. Sun Life Assurance
Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012). The claim construction
analysis was an effort on our part to ascertain the basic character of the
subject matter that is claimed and confirm that the Examiner’s
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characterization of what the claims are directed to was accurate. Here “the
determination of patent eligibility require[d] a full understanding of the basic
character of the claimed subject matter.” Id. at 1273–74. Only then could we
decide, as a matter of law, “whether claim 1 is directed to an abstract idea.
Specifically, is claim 1 directed to organizing and tracking information
(Examiner) or an improvement to technology (Appellant)?” Decision 5.
Appellant also argues that, given our claim construction analysis, our
characterization of what claim 1 is directed to differs substantially from the
Examiner’s characterization. “[M]anaging operational risk is substantially
different[ ] than [the Examiner’s characterization of claim is as being directed
to, i.e.,] organizing and tracking information.” Request 5.
The fact that the Board has articulated a characterization of what
claims are directed to that is different from that presented by the Examiner is
not dispositive. See Decision 13, quoting Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1241 (Fed. Cir. 2016) (“The Board’s slight revision of its abstract
idea analysis does not impact the patentability analysis.”)
But we agree that in this case our characterization departs from that of
the Examiner in the Final Action in a significant way. We looked more
closely for claim language that could support Appellant’s argument that the
claim is directed to an improvement in computer functionality. As a result,
our characterization includes a consideration of the technical nature of such
claim language as “applying a natural language processing (NLP)
algorithm.” Rather than simply concluding that such language is generic and
mentally–performable, we went into the Specification to see exactly how,
for example, the NLP algorithm extracts information. Decision 7–8 and 15.
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Cf. Final Rej 5.3 This put a technical spin on our characterization that is not
as apparent from the characterization “organizing and tracking information”
provided by the Examiner. Our particular characterization then formed the
basis for our determination under step one of the Alice framework that the
claim as a whole is directed to an abstract idea and not to an improvement to
technology. Decision 18–19. Such a technically–based analysis changes the
thrust of the Examiner’s reasoning, to which Appellant should be given a
new opportunity to respond. See In re Stepan Co., 660 F.3d 1341, 1343
(Fed. Cir. 2011) (“the appellant has not had a full and fair opportunity to
litigate the Board's actual basis of rejection.”)
Accordingly, we denominate the affirmance of the § 101 rejection in
the Decision as a new ground of rejection.
We are not, however, persuaded to change our decision affirming the
§ 101 rejection.
The Request includes a section entitled “generating a risk assessment
software based on the extracted risk identifiers and an operational risk
category” (Request 7), referring to a limitation in claim 1.
In this section Appellant argues that “the Board’s analysis appears to
be contradicting itself” (id. at 8) as to said “generating” limitation in claim 1.
On the one hand, we agreed that said “generating a risk assessment
software” limitation is “‘necessarily performed using a computer’”
(Decision 9, quoting the Appeal Brief at 12:6–7) but on the other hand,

3 We should note that the Examiner did present a more technically–based
analysis in the Answer and had it been included as part of the reasoning used
to issue the Final Action, we may not have been as persuaded by Appellant’s
argument. Answer 4–8.
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according to Appellant, “the Board asserts that the ‘generating’ limitations
recites an abstract idea.” Request 8. According to Appellant, “the Board
cannot properly divorce the ‘risk assessment software’ from the
‘generating.’ . . . [T]he Board has erred by not recognizing that the entire
‘generating a risk assessment software based on the extracted risk
identifiers and an operational risk category’ is an additional element.” Id. at
8–9.
Appellant’s description of the Board’s analysis is inaccurate.
We did not determine that said “generating a risk assessment
software” limitation recites an abstract idea. Rather, we determined that the
claim as a whole is directed to an abstract idea. See Decision 11. We did not
italicize “a risk assessment software” where we reproduced claim 1 (see
Decision 2) because it was a limitation we needed to focus on to answer the
question of whether the claim was directed to an abstract idea or, as
Appellant argued, a technological improvement. After giving it a reasonably
broad construction in light of the Specification, we arrived at the
determination that under step one of the Alice framework claim 1 as a whole
is directed to an abstract idea. We clearly stated that “although the step calls
for ‘generating a risk assessment software,’ in light of the Specification, said
phrase is reasonably broadly construed as encompassing computer-enabled
displaying of operational risk assessments.” Id. at 10. We did indeed
recognize that every word in said “generating” limitation must be
considered. See the claim construction analysis on pages 9–10 of the
Decision.
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Appellant argues that “the claims are not attempting to monopolize
the generation of risk assessment software - rather, the claims recite a
specific manner of generating risk assessment software not disclosed by the
applied prior art.” Request 9. But, as we explained in the Decision, the
specific manner of generating risk assessment software as is currently
worded in the claim is vague and lacks sufficient technical detail. While it
may be specific, the “generating a risk assessment software” limitation, for
example, “is worded in result-oriented language lacking in any technical
detail about the mechanism for generating the software.” Decision 9. See
also id. at 17–18:
By so broadly defining the inventive method, that is, by setting
out what it is aspiring to accomplish without any means for achieving
it, other than via a generic NLP algorithm and means for “generating a
risk assessment software,” let alone any purported technological
improvement, the claim is in effect presenting the invention in purely
result-based functional language, strengthening our determination
under Alice step one that the claim is directed to an abstract idea.
On page 10, Appellant repeats an argument from the Appeal Brief to
the effect that the Examiner has not presented factual evidence to show the
claimed elements, either alone or in combination, are well-understood,
routine, and conventional. We disagree for the reasons stated in the
Decision. See Decision 19 (“the Examiner cogently explains the
conventional nature of the means covered by the claim for performing the
steps as claimed, citing the intrinsic record as evidence. [Final Action] at 6-
7.”) In addition to the Examiner’s factual findings, we added discussion
about the Specification disclosing using learning systems based
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on conventional structures. “Accordingly, the Specification provides
intrinsic evidence that the claimed NLP algorithm and means for ‘generating
a risk assessment software’ as claimed are conventional.” Id. at 20.
Lastly, Appellant points out that they cited BASCOM4 in the Appeal
Brief and that it appears we did not consider it. Request 10.
It is true BASCOM was cited. See Appeal Brief 18. And we did
consider it. But we did not see how that decision impacts our determination
under step two of the Alice framework that “claim 1 does not include an
element or combination of elements circumscribing the patent-ineligible
concept it is directed to so as to transform the concept into a patent-eligible
invention.” Decision 21.
Appellant cited BASCOM for the proposition that “the alleged fact
that the additional elements are ‘generic’ is not enough to meet the
Examiner’s burden with regard to Step 2B.” Appeal Brief 18. But that was
never in dispute. The question is whether the evidence shows the claimed
elements, either alone or in combination, are well-understood, routine, and
conventional. We had already addressed that. See Decision 19–20.
For the foregoing reasons, we maintain that claims 1–21 are directed
to judicially-excepted subject matter without significantly more and,
therefore, that they should remain subject to a rejection under 35 U.S.C.
§ 101 as patent-ineligible. Albeit we maintain our Decision to affirm the
§ 101 rejection of the claims, we denominate the affirmed rejection as a
NEW GROUND OF REJECTION.

4 BASCOM Global Internet Services v AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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DECISION SUMMARY
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Denied Granted
1–21 101 Eligibility 1–21

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–21 101 Eligibility 1–21 1–21
1–5, 8–12,
15–19
103(a) Monk, Bassin 1–5, 8–
12, 15–19

6, 7, 13,
14, 20, 21
103(a) Monk,
Bassin,
Butler
6, 7, 13,
14, 20, 21

Overall
Outcome
1–21 1–21

NEW GROUND
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .
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(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

GRANTED
37 C.F.R. § 41.50(b)