Marc Light et al.

Patent Trials and Appeals Board

Feb 16, 2022

2020004730 (P.T.A.B. Feb. 16, 2022)

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 02/16/2022 Duncan Galloway Greenwald PLLC 9625 Ormsby Station Road Louisville, KY 40223 EXAMINER KIM, CHRISTY Y ART UNIT PAPER NUMBER 2169 NOTIFICATION DATE DELIVERY MODE 02/16/2022 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): info@dgg-law.com kduncan@dgg-law.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 REQUEST FOR REHEARING Appellant filed a Request for Rehearing (“Req. Reh’g”) under 37 C.F.R. § 41.52(b)(2) for reconsideration of our Decision on Appeal, mailed November 17, 2021 (“Decision”). In that Decision, we reversed the Examiner’s obviousness rejections of claims 1, 3-8, and 10-22, but entered new grounds of rejection of claims 1, 3-8, and 10-22 (1) under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, and (2) under 35 U.S.C. § 101 as being directed to a non- statutory subject matter. In the Request for Rehearing (“Req. Reh’g”), 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. Appeal 2020-004730 Application 12/341,926 2 Appellant argues that the Board misapprehended (1) the Specification to find a lack of written description, and (2) the claims to find an abstract idea. We have considered Appellant’s arguments against the new grounds of rejection, but we are not persuaded by Appellant’s arguments. We have provided herein additional explanations, but decline to change our decision in view of Appellant’s arguments. ANALYSIS The applicable standard for a Request for Rehearing for new grounds of rejection is set forth in 37 C.F.R. § 41.52(b)(2), which provides in relevant part, “[t]he request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which the rehearing is sought.” Claims 1, 3-8, and 10-22: Written Description Appellant presents several new arguments in support of his characterization that the Board has misapprehended or overlooked in entering the new ground of rejection for lack of written description. Req. Reh’g 2-14. First, Appellant argues “[t]he Decision’s interpretation of the claimed limitations is not consistent with Appellant’s specification, the prosecution history, and with the Summary of Claimed Subject Matter in Appellant’s Brief” because “the zoner as disclosed in Appellant’s specification is not performing the pretagging of the entity tagger as claimed.” Id. at 3-4. According to Appellant, “[t]he zoner does not perform the pretagging on the text segment” and, as such, “[t]he Decision’s mischaracterization of the Appeal 2020-004730 Application 12/341,926 3 limitation of Appellant’s claims after years of prosecution raises a flawed and unsupported rejection.” Id. at 4. This argument is misleading. The Board has never relied on the zoner 112, shown in Figure 1, to perform any tagging or pretagging operation as argued. Figure 1 is reproduced below with additional markings in color for illustration: Figure 1 depicts 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 to tag entity names within sentence 109 as being one of a person, Appeal 2020-004730 Application 12/341,926 4 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 three sub-components: (1) Tokenizer 111 to split sentence 109 or text segment into word tokens, (2) Zoner 112 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. As discussed in our Decision, 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).” Decision 13 (citing 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. As such, both “pretagging” and “tagging” are performed by the same statistical sequence tagger 113. For these reasons, we did not find in Appellant’s Specification any written description support for the following features: (1) The claimed “entity tagger module” 110 and “statistical sequence decoder” 113, shown in Figure 1, that are separate and distinct software modules because the statistical sequence decoder 113 is actually part of the entity tagger module 110 (see Spec. 4:4-7); Appeal 2020-004730 Application 12/341,926 5 (2) the 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,” after the claimed “entity tagger module [] to automatically pretag a first portion of the text segment” as recited in claims 1, 8, and 12. Decision 14. Second, Appellant argues (1) “[t]he entity tagger module and the statistical sequence decoder of the claimed system operate in two distinct steps” and (2) “[a] person having ordinary skill in the art would understand the present specification as disclosing the claimed invention comprises an entity tagger which performs a non-statistical pretagging on a text segment and further comprises a statistical sequence decoder which, responsive to and constrained by the pretagging, tags a second portion of the text segment, the second portion being different than the first portion.” Req. Reh’g 4-5. However, these arguments are not supported by evidence from Appellant’s own Specification. Nor do these arguments demonstrate the Board has misapprehended or overlooked any written description issue, especially when Appellant’s Figure 1 shows that 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, as explained in our Decision, the Appeal 2020-004730 Application 12/341,926 6 Specification supports that both “pretagging” and “tagging” are part of an overall tagging process performed by the statistical sequence tagger 113 (or decoder) as part of the entity tagger 110. Decision at 13-14; Spec. 3:21-4:7, 5:19-26. Lastly, Appellant further cites earlier filed provisional applications No. 61/063,047 filed January 30, 2008 (‘047 Application), and No. 61/008,714 filed December 21, 2007 (‘714 Application), that were incorporated by reference, as providing written support for the two separate, distinct software modules, i.e., the claimed “entity tagger module” 110 and the claimed “statistical sequence decoder” 113, shown in Figure 1. Req. Reh’g 6-14. In particular, Appellant argues the ‘714 Application provides additional drawings (Figures 4-5) and Appendices A-B to describe “[a]n algorithm [that] initiates taggers which include a lookup and rule-based taggers which the rule-based tagger being embedded in a statistical model,” including (1) a look-up tagger, shown in Figure 4, to induce a list of unambiguous names and to find systematic variants of the names to add to the unambiguous list; and (2) a rule-based tagger, shown in Figure 5. Id. at 11-13. We remain unpersuaded that the Board has misapprehended or overlooked any written description issue. The additional drawings (Figures 4-5) and Appendices A-B of the ‘714 Application only demonstrate that both “pretagging” and “tagging” are part of an overall tagging process performed by the statistical sequence tagger 113 (or decoder) as part of the larger entity tagger 110. Spec. 3:21-4:7, 5:19-26. For these reasons, we decline to change our decision rejecting claims 1, 8, and 12, and their respective dependent claims 3-7, 10, 11, and 13-22 Appeal 2020-004730 Application 12/341,926 7 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 3-8, and 10-22: Patent Eligibility Turning now to the question of patent eligibility, Appellant presents several new arguments in support of his characterization that the Board has misapprehended or overlooked in entering the new ground of rejection for lack of patent-eligible subject matter. Req. Reh’g 15-21. First, Appellant argues “[t]he Decision’s analysis of Step 2A does not consider whether the claim ‘integrates a judicial exception into a practical application.”’ Id. at 16. According to Appellant, the manner in which the claimed invention provides for a practical application by the automated processing of natural language text segments to identify, tag, and resolve, in a specifically claimed manner, portions of that text segment is an improvement to a computer system and to the prior art. The claimed limitations recite very specific rules for text segment processing that are unlike any manual or mental method and are therefore patent eligible like the animation method of McRO. . . The claimed system improves over the systems and methods of the prior art and does so in a way is not merely the implementation of conventional techniques on a general-purpose computer. The system as claimed does not recite features inherent to the functioning of a computer . . . The claimed invention solves a problem specific to the computer field not related to any abstract idea identified in the groupings provided in the 2019 Guidance. See 84-4 Fed. Reg. 50, 52. Furthermore, the claimed system incorporates specific system elements and functions which integrate the alleged exception identified by the Decision into a practical application of that exception. Appeal 2020-004730 Application 12/341,926 8 Id. at 17 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Appellant also argues “the claimed invention improves the functioning of a computer” and “provides a practical application of the alleged abstract idea by claiming a system for automatically identifying and resolving entities within a text segment by the claimed set of patent eligible rules.” Id. at 18. These arguments are not persuasive, however. We did not misapprehend or overlook Alice Step 2A, Prong Two (Integration into a Practical Application) because the Alice Step 2A analysis was addressed on pages 19-20 of our Decision. Likewise, Appellant’s reliance on McRO is misplaced. For example, McRO’s ’576 patent (U.S. Patent No. 6,307,576) describes computer software for matching audio to a 3D animated mouth movement to provide lip-synched animation. McRO’s claims contain (i) specific limitations regarding a set of rules that “define[] a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence” to enable computers to produce “accurate and realistic lip synchronization and facial expressions in animated characters” (McRO, 837 F.3d at 1313) and, when viewed as a whole, are directed to (ii) a “technological improvement over the existing, manual 3-D animation techniques” that uses “limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.” Id. at 1316. Unlike McRO, Appellant’s Specification and claims do not describe technological improvements. Likewise, identifying and tagging names and events in text and automatically inferring relationships between tagged Appeal 2020-004730 Application 12/341,926 9 entities in documents does not provide any “technical solution to a technical problem.” Decision at 20. 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 Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Nor does Appellant’s invention entail 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 (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). Third, Appellant argues “[t]he Decision has not properly demonstrated that claim 1 is not useful in the context of the requirements of §101 as being directed to an abstract idea under Step 2A.” Req. Reh’g 17. This argument, however, belies the § 101 jurisprudence developed since the Supreme Court’s ruling in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). Under the Supreme Court’s two-step framework and the Office’s application of the Supreme Court’s two-step framework, we are not required to determine whether Appellant’s claim 1 is useful, as argued. Even “[g]roundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). Instead, we are tasked to evaluate under Alice step 1 or “Step 2A” to whether the claim recites: Appeal 2020-004730 Application 12/341,926 10 (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)).2 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 “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. As explained on pages 17-21 of our Decision, we did not find any “additional elements” recited in claims 1, 8, and 12 integrate the abstract idea into a practical application. Nor did we find any element or 2 All references to the MPEP are to the Ninth Edition, Revision 08.2017 (rev. Jan. 2018). Appeal 2020-004730 Application 12/341,926 11 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. Lastly, Appellant argues the “Decision has not provided sufficient evidence that the claimed limitations alleged to be ‘well-understood, routine, and conventional’ are ‘well-understood, routine, and conventional’ aside from making general conclusory statements to that effect.” Req. Reh’g 19- 20 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)). This argument is also not persuasive. In Berkheimer, the Federal Circuit held “[w]hether something [(i.e., any additional elements beyond the abstract idea)] is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer, 881 F.3d 1369. However, Berkheimer is limited to Alice step 2 and is only applicable after a determination is made that a patent claim is directed to an abstract idea under Alice step 1. The question of whether a claim is directed to an abstract idea under Alice step 1 is still a question of law. See, e.g., In re Wang, 737 Fed. App’x 534, 535 (Fed. Cir. 2018); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331 (Fed. Cir. 2015) (“We review questions concerning compliance with the doctrinal requirements of § 101 of the Patent Act (and its constructions) as questions of law, without deference to the trial forum.”). As previously discussed, we found the additional elements beyond the abstract idea recited in Appellant’s claims 1, 8, and 12 do not transform the abstract idea into a patent eligible invention. Appeal 2020-004730 Application 12/341,926 12 Here, Appellant refers to limitations recited in claims 1, 8, and 12 that are part of the abstract idea identified under Alice step 1, and argues the Board has to provide evidence to show these limitations are “well- understood, routine, and conventional” under Alice step 2. Req. Reh’g 19- 20. However, Berkheimer was never contemplated by the Federal Circuit to transform an otherwise abstract idea under Alice step 1 into a patent- eligible invention under Alice step 2 in the absence of evidence showing certain limitations are “well-understood, routine, and conventional”; nor is Berkheimer now intended to permit Appellant to invoke Berkheimer to undermine or replace Alice step 1 altogether. Instead, the law is clear that the claim element to be considered under Alice step 2 cannot be the abstract idea itself. Berkheimer, 890 F.3d at 1374 (Moore, J., concurring) (“Berkheimer . . . leave[s] untouched the numerous cases from [the Federal Circuit] which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.”); BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1283 (Fed. Cir. 2018) (indicating same). Nevertheless, both O’Leary and Miller, as cited prior art of record, provide objective evidence to demonstrate Appellant’s claimed (1) “entity tagger” [shown in Figure 1] to tag entity names within sentence as being one of a person, company, and location; and (2) “entity resolver” to resolve named entities by associating or linking one or more tagged entity names within text are “well known, routine, and conventional.” See O’Leary ¶¶ 10, 33-35, 40, 46-50, Figs. 3, 7, 10; and Miller ¶¶ 44-45, Figs. 3-4. For example, O’Leary’s Figure 3 is reproduced below with additional markings in color for illustration: Appeal 2020-004730 Application 12/341,926 13 O’Leary’s Figure 3 depicts content mining system 50 including, among others, term recognition module 62 (i.e., Appellant’s claimed “tokenizer”) to split text into word tokens as an item for marking, event classification 64 (i.e., Appellant’s claimed “entity tagger”) to tag entity names within text, and evidence resolution 66 (i.e., Appellant’s claimed “entity resolver”). O’Leary ¶¶ 37, 40-44. For these reasons, we decline to change our decision rejecting claims 1, 8, and 12, and their respective dependent claims 3-7, 10, 11, and 13-22 under 35 U.S.C. § 101 as directed to non-statutory subject matter. CONCLUSION We have considered the new arguments raised by Appellant in the Request, but find none of these arguments persuasive that our original Decision misapprehended or overlooked in entering the new ground of rejection. It is our view, Appellant has not identified any points the Board Appeal 2020-004730 Application 12/341,926 14 misapprehended or overlooked. We decline to grant the relief requested. This Decision on Appellant’s “REQUEST FOR REHEARING” is deemed to incorporate our earlier Decision by reference. See 37 C.F.R. § 41.52(a)(1) (2011). DECISION We have granted Appellant’s request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference/ Basis Denied Granted 1, 3-8, 10- 22 112(a) 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 Final Outcome of Appeal after Rehearing 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 Appeal 2020-004730 Application 12/341,926 15 Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed New Grounds 1, 3-8, 10-22 101 Eligibility 1, 3-8, 10-22 Overall Outcome 1, 3-8, 10-22 1, 3-8, 10-22 REHEARING DENIED