Mi Yeon. KimDownload PDFPatent Trials and Appeals BoardOct 29, 201910553479 - (D) (P.T.A.B. Oct. 29, 2019) Copy Citation 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. 10/553,479 10/17/2005 Mi Yeon Kim 5540.115880 8900 24978 7590 10/29/2019 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 EXAMINER BOYCE, ANDRE D ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 10/29/2019 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): docket@gbclaw.net ptomail@gbclaw.net verify@gbclaw.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MI YEON KIM ____________ Appeal 2018-002177 Application 10/553,479 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MICHAEL W. KIM, and MATTHEW S. MEYERS, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6–23, 25–31, 33, and 34. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as NHN Corporation. (Appeal Br. 2). Appeal 2018-002177 Application 10/553,479 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention is directed to a method of “providing answers to a question wherein the quality of the question and answer data posted by users is evaluated to improve the quality of the question and answer” (Spec. 1:6–9). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method that utilizes a processor to provide answers to a question, comprising: (a) receiving a question from a first user; (b) providing the question on a given web page; (c) receiving evaluation data for the question from a second user or an operator of the web page, the evaluation data of the question being an indication of the quality of the question; (d) calculating evaluation result data, using the processor, by determining whether the evaluation data is received from the second user or the operator, determining whether a predetermined authority has been assigned to the second user by the operator; and assigning a predetermined weight to the evaluation data received from the second user and the operator; and (e) providing the evaluation result data on the web page in association with the question, wherein the first user, the second user, and the operator are different from each other. THE REJECTION The following rejection is before us for review: Claims 1–4, 6–23, 25–31, 33, and 34 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Appeal 2018-002177 Application 10/553,479 3 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence2. ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues that the rejection of claim 1 is improper because the claim is not directed to an abstract idea (Appeal Br. 11–17; Reply Br. 2– 4). The Appellant argues further that the claim is not an abstract idea in view of the Federal Circuit Decision McRO Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) ( Appeal Br. 17, 18; Reply Br. 4, 5). In contrast, the Examiner has determined that the rejection of record is proper (Final Action 2–13; Ans. 2–10). We agree with the Examiner. An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2018-002177 Application 10/553,479 4 Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection Appeal 2018-002177 Application 10/553,479 5 of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application, i.e., evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (see Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)). 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: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) 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. Appeal 2018-002177 Application 10/553,479 6 If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must 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 (citation omitted). “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. (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. We begin our analysis under the first prong of step 2A of the Guidance. The Specification at page 1, lines 5–9, states the invention relates to a method of providing answers to a question wherein the quality of the question and answer data posted by users is evaluated to improve the quality of the question and answer. Here, the Examiner has determined that the claim 1 is directed to the abstract idea of “providing answers to questions” including steps such as receiving a question from a first user, receiving evaluation data for the question from a second user, calculating evaluation result data by assigning a predetermined weight to the evaluation data, and providing the evaluation result data in association with the question (Ans. 5). The Examiner has determined that the claimed subject matter is directed to an idea of itself and human activity and concepts involving organizing information and an abstract concept (Ans. 7). We substantially agree with the Examiner. We determine that the claim recites subject matter in italics above which is directed to the abstract concept of “providing answers to questions” Appeal 2018-002177 Application 10/553,479 7 in the form of receiving a question, evaluating data regarding the question (i.e., “receiving evaluation data,” “calculating evaluation data”) and providing the evaluation result data. This may at least be characterized as reciting one of the “certain methods of organizing human activity” that include “managing personal behavior or relationships or interactions between people,” specifically, “teaching,” in that teaching encompasses “providing answers to questions”. See Guidance, 84 Fed. Reg. at 52. Furthermore, pursuant to Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” is a mental process where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind. See October 2019 Update: Subject Matter Eligibility, 84 Fed. Reg. 55,942 (Oct. 18, 2019) (document citing Electric Power Group available at https://www.uspto.gov/PatentEligibility). We determine that the above recited “receiving evaluation data,” “calculating evaluation data,” and “providing the evaluation result data” are such limitations. Indeed, the Guidance expressly cites “evaluation” as one of the sub-groupings under mental processes, and we are unpersuaded that the type of “evaluation” performed here is of a character that could not have been performed practically in the human mind. Thus, we consider the claim to recite a judicial exception as identified above. Under the second prong of step 2A of the Guidance, after evaluation the claims, we are unpersuaded that the claim improves computer functionality, improves another field of technology, utilizes a particular Appeal 2018-002177 Application 10/553,479 8 machine, or effects a physical transformation. Rather, we determine that nothing in the claims imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort to monopolize the judicial exception. For example, in claim 1 the steps of [1] “receiving a question from a first user”, [2] “providing the question on a given web page”, [3] “receiving evaluation data for the question from a second user or an operator of the web page”, [4] “calculating evaluation result data”, [5] “assigning a predetermined weight to the evaluation data received from the second user and the operator”, and [6] “providing the evaluation result data on the web page” are merely steps performed by a generic computer that do not improve computer functionality. That is, these recited steps [1]–[6] “do not purport to improve the functioning of the computer itself,” but merely involve generic computer functions performed by a generic processor (see, e.g., Spec. 21, ll. 13–14, stating “[t]he computer system 1200 includes any number processors 1201 (also referred to as central processing units, or CPUs)”). For example, we are unpersuaded that there is anything about “providing the question on a given web page” that would not be implemented by placing the “question” on a generic monitor using a generic processor. Likewise, these same steps [1]–[6] listed above do not improve the technology of the technical field, in that they, again, merely use generic computer components and functions to perform the steps. For example, we are unclear as to how “receiving a question from a first user” improves the functioning of a computer. Also, the method steps [1]–[6] above are recited at such a high level of generality that they do not require a “particular machine” and can be utilized with a general purpose computer, in that the Appeal 2018-002177 Application 10/553,479 9 steps performed are purely generic. In this case the general purpose computer is merely an object on which the method operates in a generic manner. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. Indeed, there is not article at all. Thus, the recited steps [1]–[6] fail to provide meaningful limitations to limit the judicial exception and rather are mere instructions to apply the method to a generic computer. Considering the elements of the claim both individually and as “an ordered combination” the functions performed by the computer system at each step of the process are purely generic. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h). Turning to the second step of the Alice and Mayo framework, and Step 2B of the Guidance, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. The claim fails to add a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field. Rather the claim uses well-understood, routine, and conventional activities previously known in the art and they are recited at a high level of generality. The Specification, at pages 21 and 22, for example describes using conventional computer components such as central processing units and computer storage in a conventional manner. The claim specifically includes a recitation for a processor in the preamble and a Appeal 2018-002177 Application 10/553,479 10 providing a web page in the body of the claim to implement the method, but these computer related components are all used in a manner that is well- understood, routine, and conventional in the field. The Appellant has not shown these claimed generic computer components which are used to implement the claimed method are not well understood, routine, or conventional in the field. The Appellant has not demonstrated that the central processing units described in the Specification, at pages 21 and 22, for instance are not general purpose computer components known to perform similar functions in a well-understood manner. Here, the claim has not been shown to be “significantly more” than the abstract idea. The Appellant has also cited to McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) but the claims in that case are distinguished from this case in being directed to rules for lip sync and facial expression animation. Here, in contrast, the claims are directed to the abstract concept identified above of “providing answers to questions” in the form of receiving a question, evaluating data regarding the question (i.e., “receiving evaluation data,” “calculating evaluation data”) and providing the evaluation result data which may at least be characterized as reciting one of the “certain methods of organizing human activity”, such as “teaching,” and a “mental process,” as set forth in the 2019 Revised Guidance. Further, as noted above, the Appellant has failed to show that the claim is “significantly more” than the abstract idea as noted above. For these above reasons the rejection of claim 1 is sustained. The Appellant has provided the same arguments for the remaining claims which are drawn to similar subject matter and the rejection of these claims is sustained as well for the same reasons given above. Appeal 2018-002177 Application 10/553,479 11 CONCLUSION OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1–4, 6–23, 25–31, 33, and 34 under 35 U.S.C. § 101. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–23, 25–31, 33, 34 101 1–4, 6–23, 25–31, 33, 34 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 Copy with citationCopy as parenthetical citation