Marc Light et al.

Patent Trials and Appeals Board

Nov 17, 2021

2020004730 (P.T.A.B. Nov. 17, 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.
12/341,926 12/22/2008 Marc Light 113027.000060US1 1749
79804 7590 11/17/2021
Duncan Galloway Egan Greenwald, PLLC
9625 Ormsby Station Road
Louisville, KY 40223
EXAMINER
KIM, CHRISTY Y
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
11/17/2021 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):
carnold@dgeglaw.com
kduncan@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARC LIGHT, FRANK SCHILDER,
RAVI KUMAR KONDADADI, CHRISTOPHER C. DOZIER,
WENHUI LIAO, and SRIHARSHA VEERAMACHANENI
____________

Appeal 2020-004730
Application 12/341,9261
Technology Center 2100
_____________

Before TREVOR M. JEFFERSON, HUNG H. BUI, and MINN CHUNG,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 3–8, and 10–22, all of the pending
claims. Appeal Br. 21–25 (Claims App.). Claims 2 and 9–11 are cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.2 Pursuant to our authority under 37 C.F.R. § 41.50(b),
we enter new grounds of rejection for claims 1, 3–8, and 10–22.

1 “Appellant” herein refers to “applicant” as defined in 37 C.F.R. § 1.42.
According to Appellant, Thomson Reuters Global Resources Unlimited
Company is identified as the real party in interest. Appeal Br. 1.
2 We refer to the Appellant’s Appeal Brief filed November 25, 2019
(“Appeal Br.”); Reply Brief filed June 8, 2020 (“Reply Br.”); Examiner’s
Answer mailed April 6, 2020 (“Ans.”); Final Office Action mailed June 25,
2019 (“Final Act.”); and Specification filed December 22, 2008 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s invention relates to “extraction of data and related
information from documents, such as identifying and tagging names and
events in text and automatically inferring relationships between tagged
entities, events, and so forth.” Spec. 1:21–24. Figure 1, depicting named
entity tagging and resolving system 100 for named-entity tagging, resolving
and event extraction, is reproduced below with additional markings in color
for illustration:

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Figure 1 shows named entity tagging and resolving system 100 including
processor 101 and memory 102 for storing two basic software modules: (1)
entity tagger 110 programmed to receive text segments, such as a sentence
109, and tag entity names within sentence 109 as being one of a person,
company, and location; and (2) entity resolver 119 programmed to resolve
named entities by associating or linking one or more tagged entitty names
within text with an entry within authority files 130. Spec. 3:14–4:7, 6:29–
34. As shown in Figure 1, entity tagger 110 includes (i) tokenizer 111 to
split sentence 109 or text segment into word tokens, (ii) zoner 12 to locate or
isolate parts of the text (i.e., sentence 109) that need to be processed for
tagging, and (iii) statistically sequence tagger 113 to tag text within sentence
109 as a person, company, and location, based on unambiguous name lists
(lookup tables) 114 and rules 115. Spec. 3:14–4:26.
Representative Claim
Claims 1, 8, and 12 are independent. Representative claim 1 is
reproduced below with disputed limitations emphasized and bracketed
numerals added for clarity:
1. A computer system having at least one processor and at least one
memory, the system comprising:
an entity tagger module comprising machine readable code
stored in the at least one memory and when executed by the
at least one processor adapted to automatically tag entity
names within a text segment as being one of a person,
company, and location;
the entity tagger module further adapted to [1] automatically
pretag a first portion of the text segment as being one of a
person, company, and location based on a list or rule,
pretagging being irrespective of position of the first portion
within the text segment and without applying statistical
processes;
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a statistical sequence decoder operating on a word sequence,
responsive to and constrained by the entity tagger module and
comprising machine readable code stored in the at least one
memory and when executed by the at least one processor
adapted to [2] tag a second portion of the text segment as
being one of a person, company, or location, the second
portion being different than the first portion, the tagging of
the second portion based in part on a set of features derived
from a grouping of the pretagged first portion of the text
segment;
an entity resolver comprising machine readable code stored in
the at least one memory and when executed by the at least one
processor adapted to logically associate by the processor one
or more of the tagged entity names with an entry in a data set
of named entities; and
the entity resolver further adapted to automatically generate a
first set of relationship data associated with a relationship
between the tagged entity name and a current legal event.
Appeal Br. 21 (Claims App.).
REJECTIONS AND REFERENCES
(1) Claims 1, 3–8, 10–15, 17–20, and 22 stand rejected under
35 U.S.C. § 103 as obvious over the combined teachings of O’Leary et al.
(US 2005/0131935 A1; published Jun. 16, 2005; “O’Leary”) and Miller (US
2006/0253274 A1; published Nov. 9, 2006; “Miller”). Final Act. 4–12.
(2) Claims 16 and 21 stand rejected under 35 U.S.C. § 103 as
obvious over the combined teachings of O’Leary, Miller, and Luo et al. (US
7,509,163 B1; issued Mar. 24, 2009; “Luo”). Final Act. 12–13.

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ANALYSIS
In support of the obviousness rejection, the Examiner finds the
combination of O’Leary and Miller teaches all limitations of Appellant’s
claims 1, 8, and 12. Final Act. 4–12. In particular, the Examiner finds
O’Leary teaches Appellant’s claimed “computer system,” shown in Figure 3,
including: (1) “an entity tagger module . . . [i] to automatically tag entity
names within a text segment as being one of a person, company, and
location . . . [ii] to automatically pretag a first portion of the text segment as
being one of a person, company, and location based on a list or rule,
pretagging being irrespective of position of the first portion within the text
segment and without applying statistical processes;” and (2) “an entity
resolver . . . [i] to logically associate by the processor one or more of the
tagged entity names with an entry in a data set of named entities . . . [ii] to
automatically generate a first set of relationship data associated with a
relationship between the tagged entity name and a current legal event.” Id. at
4–5 (citing O’Leary ¶¶ 10, 35, 46, Figs. 7, 10). The Examiner also finds
O’Leary’s “entity tagger module” is further adapted “to tag a second portion
of the text segment [] different than the first portion [] based in part on a set
of features derived from a grouping of the pretagged first portion of the text
segment.” Id. at 4 (citing O’Leary ¶¶ 33–34, 40, 47–50, Fig. 7).
The Examiner acknowledges O’Leary’s computer system does not
teach (3) the claimed “statistical sequence decoder for tagging,” but relies on
Miller for teaching “a statistical sequence decoder operating on a word
sequence for tagging portions of the text segment as being one of a person,
company, or location” to support the conclusion of obviousness. Id. at 5
(citing Miller ¶¶ 44–45, Figs. 3–4).
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Appellant contends neither O’Leary nor Miller, in combination or
individually, teaches or suggests the claimed (1) “entity tagger module . . .
to automatically pretag a first portion of the text segment as being one of a
person, company, and location based on a list or rule, pretagging being
irrespective of position of the first portion within the text segment and
without applying statistical processes” and the claimed (3) “statistical
sequence decoder” . . .
to tag a second portion of the text segment as being one of a
person, company, or location, the second portion being different
than the first portion, the tagging of the second portion based in
part on a set of features derived from a grouping of the pretagged
first portion of the text segment.
Appeal Br. 8–17; Reply Br. 2–4. In particular, Appellant argues
O’Leary does not disclose (1) “pretag[ging] a first portion of the text
segment” and then (2) “tag[ging] a second portion of the text segment . . .
different than the first portion . . . based in part on a set of features derived
from a grouping of the pretagged first portion of the text segment,” as
recited in claim 1, and similarly recited in claims 8 and 12. Appeal Br. 8–
10. According to Appellant,
The marking of items in O’Leary as either primary or secondary
evidence is a first identification step. The clarification of the
items marked as primary and secondary evidence in O’Leary is
a second step that operates only on those items already marked
as evidence. The clarification of items marked as evidence in
O’Leary does not operate on some other portion of a text segment
or document. Marking items as primary evidence in O’Leary is
not a pretagging as alleged by Examiner. O’Leary marks all
tokenized text as primary and secondary evidence in a single
step, and then any further evidence resolution steps operate on
those items already marked as evidence. Changing an item from
being marked as secondary evidence to primary evidence as
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disclosed in O’Leary does not “teach[] the claimed tag a second
portion” as alleged by Examiner.

Reply Br. 3 (emphasis added) (alteration in original).
Appellant also argues Miller does not cure the deficiencies of O’Leary
because Miller only teaches “a single tagging operation,” i.e. “an evaluation
module 114 which first ‘tags’ and then determines an evaluation path,” and
once done, “selects the best path according to the Viterbi algorithm.”
Appeal Br. 17 (citing Miller ¶¶ 44, 50, Fig. 3). Because neither O’Leary nor
Miller teaches (1) “pretag[ging] a first portion of the text segment” and then
(2) “tag[ging] a second portion of the text segment . . . different than the first
portion,” Appellant argues that (1) the combination of O’Leary and Miller is
improper and (2) “the Examiner impermissibly relies on hindsight based on
information gleaned solely from Appellant’s specification, including the
claims in arriving at the proposed combination.” Id. at 16–17.
In response, the Examiner takes the position that:
[t]he broadest reasonable interpretation of these limitations [i.e.,
pretagging a first portion and tagging a second portion] includes
a first portion that is pre-tagged (whether or not it is then tagged
by the statistical sequence decoder) and a second, different
portion that is tagged (whether or not it has been pre-tagged).
Nothing in the claim prevents the statistical sequence decoder
from operating on pre-tagged information.

As explained above, the claimed pretagging of a first portion is
interpreted as isolating portions of the document or text having
proper names, and tagging of a second portion is interpreted as
passing the parts of the text that need to be processed further to
the statistical sequence tagger.

Ans. 6 (some underlining added). According to the Examiner, O’Leary’s
“[e]ntities definitively and unambiguously marked as primary evidence
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teaches the claimed ‘pretagging’” and “[s]econdary evidence is ambiguous
and inconclusive, which is why it needs to be further analyzed in the
evidence resolution step of O’Leary . . ., which teaches the claimed ‘tag a
second portion.’” Id. at 7. The Examiner also explains that because
O’Leary’s “promoted nominative terms in the evidence resolution step are
not the same nominative terms marked as primary in the term recognition
step,” the claimed “the second portion [is] being different than the first
portion.” Id.
We do not agree with the Examiner. At the outset, we note that claim
terms, during examination, are given their broadest reasonable interpretation
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Under the rule of broadest reasonable
interpretation, claim terms are given their ordinary and customary meaning,
as would be understood by one of ordinary skill in the art in the context of
the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). However, the broadest-construction rubric does not give
the Office an unfettered license to interpret the words in a claim without
regarding for the full claim language and the written description. In re
Suitco Surface Inc., 94 USPQ2d 1640, 1644 (Fed. Cir. 2010). Rather,
claims should always be read in light of the specification and teachings in
the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311
U.S. 211, 217 (1940).
Here, the term “pretag” or “pretagging” is not defined in Appellant’s
Specification. However, the term “pretagging” is described by Appellant’s
Specification in the context of an overall tagging process conducted by the
“statistical sequence tagger 113 (or decoder)” included as part of entity
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tagger 110, shown in Figure 1, which “uses one or more unambiguous name
lists (lookup tables) 114 and rules 115 to tag the text within sentence 109 as
company, person, or place or as a non-name.” Spec. 4:4–7. According to
Appellant’s Specification, “pretagging” refers generally to pinning an entity
in the text by the statistical sequence tagger 113 using the lists (lookup
tables) 114 and rules 115, and “[p]inning is a specific way to use a statistical
model to tag a sequence of characters and to integrate many different types
of information and methods into the tagging process.” Spec. 5:24–26.
As shown in Figure 1, the claimed “pretagging” and “tagging” are not
two separate, distinct steps to be performed by two separate, distinct
components, i.e., (1) entity tagger 110 and (2) statistical sequence tagger 113
(or decoder). Instead, both “pretagging” and “tagging” are part of an overall
tagging process conducted by the statistical sequence tagger 113 (or
decoder) as part of the entity tagger 110. Spec. 3:21–4:7, 5:19–26. For
example, the entity tagger 110, as shown in Figure 1, includes (1) tokenizer
111 to split text sentence into word tokens, (2) zoner 112 to isolate parts of
the text that need to be processed for tagging, and (3) statistical sequence
tagger 113 to tag named entities within the text using lists (lookup tables)
114 and rules 115. Spec. 3:21–4:7.
Based on Appellant’s Specification, we do not agree with the
Examiner that (1) the claimed “pretagging” of “a first portion” can be
broadly, but reasonably, interpreted to encompass O’Leary’s “isolating
portions of the document or text having proper names” or (2) the claimed
“tagging” of “a second portion” can be broadly, but reasonably, interpreted
to encompass O’Leary’s “passing the parts of the text that need to be
processed further,” (Ans. 6) especially, when O’Leary is completely silent
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regarding the recited relationship between (1) “a first portion of the text
segment” and (2) “a second portion of the text segment . . . different than the
first portion . . . based in part on a set of features derived from a grouping of
the pretagged first portion of the text segment,” as recited in claim 1, and
similarly recited in claims 8 and 12. Instead, O’Leary’s items (tokens of
text) are marked or tagged as either “primary” or “secondary” evidence, as
shown in Figure 10; but once marked, the same “secondary” evidence for a
company or person is promoted to “primary” status when other primary
evidence for that entity is also found in a content item. O’Leary ¶¶ 47–50,
Fig. 10. While O’Leary teaches “tagging,” O’Leary does not teach
Appellant’s claimed distinct steps of (1) “pretagging” of “a first portion” and
then (2) “tagging” of “a second portion of the text segment . . . different than
the first portion . . . based in part on a set of features derived from a
grouping of the pretagged first portion of the text segment,” as recited in
claims 1, 8, and 12.
Like O’Leary, Miller also teaches “a single tagging operation,” i.e.
“an evaluation module 114 which first ‘tags’ and then determines an
evaluation path.” Appeal Br. 17 (citing Miller ¶¶ 44, 50, Fig. 3). As such,
we are persuaded that Miller does not cure the deficiencies of O’Leary to
arrive at Appellant’s claimed invention.
For these reasons, we do not sustain the Examiner’s obviousness
rejection of independent claims 1, 8, and 12, and the rejections of their
respective dependent claims 3–7, 10, 11, and 13–22, which are not argued
separately.

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NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), however, we
reject (1) claims 1, 3–8, and 10–22 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement; and (2) claims 1,
3–8, and 10–22 under 35 U.S.C. § 101 as being directed to a non-statutory
subject matter for the following reasons.
New § 112, 1st Paragraph Rejection of Claims 1, 3–8, and 10–22
Claim 1 recites two separate, distinct software modules: (1) an entity
tagger module and (2) a statistical sequence decoder to perform overlapping
functions. For example, claim 1 requires “an entity tagger module” to
perform two conflicting functions, i.e., (1) “to automatically tag entity
names within a text segment as being one of a person, company, and
location” and then (2) “to automatically pretag a first portion of the text
segment as being one of a person, company, and location based on a list or
rule, pretagging being irrespective of position of the first portion within the
text segment and without applying statistical processes.” In addition,
claim 1 also requires “a statistical sequence decoder” to perform a similar
function as the claimed “entity tagger module,” but with a different content,
i.e., (3)
to tag a second portion of the text segment as being one of a
person, company, or location, the second portion being different
than the first portion, the tagging of the second portion based in
part on a set of features derived from a grouping of the pretagged
first portion of the text segment.
Independent claims 8 and 12 recite similar limitations.
Written description requirement of § 112 is a question of fact. Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
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banc). The disclosure must “reasonably convey[ ] to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date.” Id. “[T]he level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the claims and on
the complexity and predictability of the relevant technology.” Id.
We find the above limitations of Appellant’s claims 1, 8, and 12 are
not supported by written description, including, for example:
(1) the two separate, distinct software modules, i.e., (i) an
entity tagger module and (ii) a statistical sequence
decoder;

(2) the conflicting functions performed by the entity tagger
module, i.e., (i) “to automatically tag entity names within
a text segment” and then (ii) “to automatically pretag a
first portion of the text segment”; and

(3) the conflicting functions performed by the entity tagger
module and the statistical sequence decoder (i) “to
automatically tag entity names within a text segment” and
then (ii) “to tag a second portion of the text segment []
different than the first portion [] based in part on a set of
features derived from a grouping of the pretagged first
portion of the text segment.”

These limitations were added during prosecution in an effort to
distinguish over the cited prior art, including, for example, (1) the
Amendment filed on September 9, 2013; (2) the Amendment filed on
September 24, 2015; and (3) the Amendment filed on March 15, 2017.
During the briefing, Appellant refers to pages 4–6, 14–15 of the
Specification as providing written support for the claimed (1) “entity tagger
module [] to automatically pretag a first portion of the text segment” and the
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claimed (2) “statistical sequence decoder [] to tag a second portion of the
text segment [] different than the first portion [] based in part on a set of
features derived from a grouping of the pretagged first portion of the text
segment.” Appeal Br. 2 (citing Spec. 4:14–6:27, 14:15–5:3, Fig. 1).
However, the cited portions of Appellant’s Specification only describe
the claimed “statistically sequence decoder” as part of the entity tagger 110,
shown in Figure 1, which “uses one or more unambiguous name lists
(lookup tables) 114 and rules 115 to tag the text within sentence 109 as
company, person, or place or as a non-name.” Spec. 4:4–7.
As shown in Figure 1, the entity tagger 110 is the larger software
module including three basic sub-components: (1) tokenizer 111 to split
sentence 109 or text segment into word tokens, (2) zoner 12 to locate or
isolate parts of the text (i.e., sentence 109) that need to be processed for
tagging, and (3) statistically sequence tagger (decoder) 113 to tag the text
within sentence 109 as a person, company, and location, based on
unambiguous name lists (lookup tables) 114 and rules 115. Spec. 3:14–4:26,
14:15–15:3, Fig. 4.
As previously discussed, the term “pretagging” is described by
Appellant’s Specification in the context of an overall tagging process
conducted by the “statistical sequence tagger 113 (or decoder).” Spec. 4:4–
7. According to Appellant’s Specification, “pretagging” refers generally to
pinning an entity in the text by the statistical sequence tagger 113 using the
lists (lookup tables) 114 and rules 115, and “[p]inning is a specific way to
use a statistical model to tag a sequence of characters and to integrate many
different types.” Spec. 5:24–26.
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However, we do not find in Appellant’s Specification any written
description support for (1) the two claimed separate, distinct software
modules, i.e., (i) an entity tagger module and (ii) a statistical sequence
decoder; (2) claimed “entity tagger module [] to automatically pretag a first
portion of the text segment” after “automatically tag[ging] entity names
within a text segment as being one of a person, company, and location”; and
(3) the claimed “statistical sequence decoder [] to [further] tag a second
portion of the text segment [] different than the first portion . . . based in part
on a set of features derived from a grouping of the pretagged first portion of
the text segment,” as recited in claims 1, 8, and 12.
For these reasons, we reject claims 1, 8, and 12, and of their
respective dependent claims 3–7, 10, 11, and 13–22 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
New § 101 Rejection of Claims 1, 3–8, and 10–22
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
In interpreting this statute, the U.S. Supreme Court has emphasized
that patent protection should not preempt “the basic tools of scientific and
technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
(“Benson”); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 71 (2012) (“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
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(2014) (“Alice”). The rationale is that patents directed to basic building
blocks of technology would not “promote the progress of science” under the
U.S. Constitution, Article I, Section 8, Clause 8, but instead would impede
the same. Accordingly, laws of nature, natural phenomena, and abstract
ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. United
States, 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216).
The Supreme Court has set forth a two-part Alice/Mayo test for
subject matter eligibility in Alice (573 U.S. at 217–18). The first step is to
determine whether the claim is directed to a patent-ineligible concept. Id.
(citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis
proceeds to the second step of the Alice/Mayo test in which we “examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted) (quoting Mayo, 566 U.S. at 72, 79). There is no need to proceed to
the second step, however, if the first step of the Alice/Mayo test yields a
determination that the claim is directed to patent-eligible subject matter.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
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In an effort to achieve clarity and consistency in how the Office
applies the Supreme Court’s two-step framework, the Office published
revised guidance interpreting governing case law and establishing a
framework to govern all patent-eligibility analysis under Alice and § 101
effective as of January 7, 2019. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 Revised
Guidance”).
2019 Revised Guidance
Under the Revised Guidance, we first look under Alice step 1 or “Step
2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes, or [iii] certain methods of organizing
human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions
between people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).3
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A,
Prong One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or

3 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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“Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
Turning to the first step of the Alice inquiry, we find Appellant’s
claims 1, 8, and 12 are directed to a patent-ineligible abstract concept of
identifying and tagging names and events in text and automatically inferring
relationships between tagged entities. All the steps of Appellant’s claim 1,
including, for example: (1) “automatically tag[ging] entity names within a
text segment as being one of a person, company, and location;” (2)
automatically pretag[ging] a first portion of the text segment as being one of
a person, company, and location based on a list or rule, pretagging being
irrespective of position of the first portion within the text segment and
without applying statistical processes;” (3) “tag[ging] a second portion of the
text segment . . . different than the first portion . . . based in part on a set of
features derived from a grouping of the pretagged first portion of the text
segment;” and (4) “logically associate[ing] . . . one or more of the tagged
entity names with an entry in a data set of named entities” involve
information and transforming that information.
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However, information, as such, is intangible, and data analysis and
algorithms, without more, are also abstract ideas. See, e.g., Microsoft Corp.
v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007); Parker v. Flook, 437 U.S.
584, 589, 594–95 (1978) (“an algorithm, or mathematical formula, is like a
law of nature”); Gottschalk, 409 U.S. at 63. “[C]ollecting information [and
analysis], including when limited to particular content (which does not
change its character as information),” and “analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more,” are “within the realm of abstract ideas.” Elec. Power Grp., 830 F.3d
at 1353–54; see also Internet Patents, 790 F.3d at 1349; Digitech Image
Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370
(Fed. Cir. 2011). That is, “[w]ithout additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.” Digitech, 758 F.3d at
1351, 1350 (“Data in its ethereal, non-physical form is simply information
that does not fall under any of the categories of eligible subject matter under
section 101”).
Alternatively, the steps recited in Appellant’s claims 1, 8, and 12 can
also be interpreted as mental steps to be performed in the human mind or by
a human using a pen and paper. See CyberSource, 654 F.3d at 1372–73
(“[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under [section] 101.”); see also In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes—or
processes of human thinking—standing alone are not patentable even if they
have practical application.”); Benson, 409 U.S. at 67 (“Phenomena of nature,
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. . . mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work.”) (emphasis
added). For example, names and events in text can be identified, tagged and
the tagged entities can be associated based on its relevancy by a librarian or
an administrator using a pen and paper. Additionally, mental processes
remain unpatentable even when automated to reduce the burden on the user
of what once could have been done with pen and paper. CyberSource, 654
F.3d at 1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”).
Thus, under Step 2A, Prong One, we determine that the claims recite
an abstract idea identified in the Revised Guidance.
Step 2A, Prong Two (Integration into a Practical Application)
Under Revised Step 2A, Prong Two of the Revised Guidance, we must
determine if the claims (specifically, any additional limitations beyond the
judicial exception) integrate the judicial exception into a practical
application. However, we discern no additional element (or combination of
elements) recited in Appellant’s claims 1, 8, and 12 that may have integrated
the judicial exception into a practical application. See Revised Guidance, 84
Fed. Reg. at 54–55. For example, Appellant’s claimed additional elements
(e.g., “nodes of a network”) do not: (1) improve the functioning of a
computer or other technology; (2) are not applied with any particular
machine (except for a generic computer); (3) do not effect a transformation
of a particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
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more than a drafting effort designed to monopolize the exception. See
MPEP § 2106.05(a)–(c), (e)–(h);
Likewise, identifying and tagging names and events in text and
automatically inferring relationships between tagged entities in electronic
documents does not provide any “technical solution to a technical problem”
as contemplated by the Federal Circuit in (1) DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs
(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). See
MPEP § 2106.05(a). For example, Appellant’s claimed “tag[ging] entity
names within a text segment” and “logically associate[ing] . . . one or more
of the tagged entity names with an entry in a data set of named entities” does
not provide a technical “solution . . . necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” DDR, 773 F.3d at 1257. Nor does Appellant’s
invention entail, like Amdocs, any “unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)” and
“improve the performance of the system itself.” Amdocs, 841 F.3d at 1300,
1302.
The focus of Appellant’s invention is not to improve the performance
of computers or any underlying technology; instead, the focus of Appellant’s
invention is to identify relevant information about entities, such as
companies, persons, or locations in electronic documents. Spec. 1:21–2:10.
For these reasons, we do not find any “additional elements” recited in
claims 1, 8, and 12 integrate the abstract idea into a practical application.
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Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Under the 2019 Revised Guidance, only if a claim: (1) recites a
judicial exception; and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); 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 2019 Revised Guidance, 84 Fed. Reg. 56. However, we find no element
or combination of elements recited in Appellant’s claims 1, 8, and 12 that
contain any “inventive concept” beyond the abstract concept or add anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. 208 at 221.
Utilizing generic computer components (e.g., a processor and
memory, shown in Appellant’s Figure 1) for identifying and tagging entities
from text and inferring relationships between tagged entities does not alone
transform an otherwise abstract idea into patent-eligible subject matter. As
our reviewing court has observed, “after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR, 773 F.3d at 1256 (citing Alice, 573
U.S. at 222).
Because Appellant’s claims 1, 8, and 12 are directed to no more than a
patent-ineligible abstract concept and do not recite something “significantly
more” under the second prong of the Alice analysis, we issue a new ground
of rejection of claim 1, 3–8, and 10–22 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting (1) claims 1, 3–8, 10–15, 17–20, and 22 as
obvious over the combined teachings of O’Leary and; and (2) claims 16 and
21 as obvious over the combined teachings of O’Leary, Miller, and Luo.
However, pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter new grounds of rejection for (1) claims 1, 3–8, and 10–22 as failing to
comply with written description requirement under 35 U.S.C. § 112, first
paragraph; and (2) claims 1, 3–8, and 10–22 as containing patent ineligible
subject matter under 35 U.S.C. § 101.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
References/Basis Affirmed Reversed New
Grounds
1, 3–8,
10–15,
17–20,
22
103 O’Leary, Miller 1, 3–8,
10–15,
17–20,
22

16, 21 103 O’Leary, Miller,
Luo
16, 21
1, 3–8,
10–22
112 Written
Description
1, 3–8, 10–22
1, 3–8,
10–22
101 Eligibility 1, 3–8, 10–22
Overall
Outcome
1, 3–8,
10–22
1, 3–8, 10–22

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Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Further, § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds 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 prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REVERSED
37 C.F.R. § 41.50(b)