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Patent Trials and Appeals Board

Nov 27, 2019

14473294 - (D) (P.T.A.B. Nov. 27, 2019)

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.
14/473,294 08/29/2014 FEDOR N. DZEGILENKO 408255-0011 1459
20575 7590 11/27/2019
Miller Nash Graham & Dunn
3400 U.S. Bancorp Tower
111 SW Fifth Avenue
PORTLAND, OR 97204
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
eofficeaction@appcoll.com
patdocketing@millernash.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte FEDOR N. DZEGILENKO
________________

Appeal 2019-000269
Application 14/473,294
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–16, which constitute all of the pending claims.1
Appeal Br. 6; Final Action mailed Nov. 8, 2017 (“Final Act.”), 2. These
claims stand rejected under 35 U.S.C. § 101 as being directed to a judicial
exception to patent-eligible subject matter without significantly more. Final
Act. 4. Claims 1–16 also stand rejected as unpatentable under 35 U.S.C.
§ 103. Final Act. 6. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
SurveyMonkey Inc. Appeal Brief filed May 9, 2018 (“Appeal Br.”), 3.
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STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

THE SECTION 101 REJECTION
The Claimed Subject Matter
Appellant describes the present invention as relating to
“improvements in [methods for] evaluating online survey questions,
particularly with regard to their potential suitability for use in connection
with various benchmarking functionalities.” Spec. 1.
Independent claim 1 illustrates the subject matter of the appealed
claims.2 This claim is reproduced below with formatting modified for
clarity, bracketed element numbering added, and emphasis added to the
claim language that recites an abstract idea:
1. An electronic device-controlled method, comprising:
[i] an electronic device receiving a plurality of responses to a
first question of an online survey;
[ii] the electronic device determining a plurality of average
daily responses for the first question of the online survey based
on the plurality of received responses;
[iii] the electronic device determining an upper confidence
level based on the plurality of received responses;
[iv] the electronic device determining a lower confidence level
based on the plurality of received responses; and

2 Appellant argues all of the claims together as a group. See Appeal Br. 6;
Reply Brief filed October 10, 2018 (“Reply Br.”), 2. Accordingly, we select
independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv)
(2017).
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[v] the electronic device determining whether the first
question of the online survey is stable based on the plurality of
average daily responses in relation to the upper and lower
confidence levels over a specified period of time.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. 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. 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 Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). 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
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof 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
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 Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection 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. at 191 (citing
Benson and Flook) (citation omitted); see also, 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.”).
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 (internal quotation marks
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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.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October
2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf) (jointly referred to
as “the 2019 Guidance”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October update).
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th Ed.,
Rev. 08.2017, Jan. 2018)).
2019 Guidance, 84 Fed. Reg. at 52–55.
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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, [and] 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.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 84 Fed. Reg. at 52–54.
Limitation [i] recites “receiving a plurality of responses to a first
question of an online survey.” Receiving responses regarding a survey
reasonably can be characterized as a certain method of organizing human
activities. More specifically, receiving such responses reasonably can be
characterized as advertising, marketing or sales activities or behaviors. The
2019 Guidance expressly recognizes certain methods of organizing human
activities including advertising, marketing, or sales activities as constituting
a patent-ineligible abstract idea. 84 Fed. Reg. at 52. Accordingly,
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limitation [i] reasonably can be characterized as reciting a patent-ineligible
abstract idea.
Limitation [ii] recites “determining a plurality of average daily
responses for the first question of the online survey based on the plurality of
received responses.” Limitation [iii] recites “determining an upper
confidence level based on the plurality of received responses.”
Limitation [iv] recites “determining a lower confidence level based on the
plurality of received responses.” Limitation [v] recites “determining
whether the first question of the online survey is stable based on the plurality
of average daily responses in relation to the upper and lower confidence
levels over a specified period of time.”
The act of making determinations, which is recited in each of
limitations [ii]–[v], reasonably can be characterized as a mental process that
that can be performed in the human mind, including evaluations and
judgments. The 2019 Guidance expressly recognizes mental processes,
including evaluations and judgments, as constituting a patent-ineligible
abstract idea. 84 Fed. Reg. at 52. Accordingly, limitations [ii]–[v]
reasonably can be characterized as reciting patent-ineligible abstract ideas.
For these reasons, each of limitations [i]–[v] reasonably can be
characterized as reciting a judicial exception to patent-eligible subject matter
under step 2A, prong 1, of the 2019 Guidance.
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that, individually or in
combination, integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance provides
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exemplary considerations that are indicative of an additional element or
combination of elements integrating the judicial exception into a practical
application, such as an additional element reflecting an improvement in the
functioning of a computer or an improvement to other technology or
technical field. Id. at 55; MPEP § 2106.05(a).
In the present case, the only language of claim 1 that is directed to an
additional element beyond the above-mentioned abstract ideas is that “an
electronic device” is what performs the mentioned abstract ideas.
Appellant argues that the claims are directed to patent-eligible subject
matter because the claims present the unconventional combination of an
electronic device determining an upper confidence level and a lower
confidence level based on received online survey responses. Appeal Br. 6.
This argument is unpersuasive because the acts of determining an
upper confidence level and lower confidence level based on received survey
responses entail the claim’s underlying abstract ideas. See BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea.”) (emphasis omitted); SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an
inventive concept in the non-abstract application realm.”).
Furthermore, claim 1’s first step of “receiving a plurality of responses
to a first question of an online survey,” as claimed, also can be reasonably
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can be characterized as merely constituting insignificant pre-solution
activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor is claim 1 directed
to a particular machine or transformation. MPEP §§ 2106.05(b), (c). Nor
has Appellant persuasively demonstrated that claim 1 adds any other
meaningful limitations. MPEP § 2106.05(e). Accordingly, Appellant has
not persuaded us that claim 1 integrates the recited abstract ideas into a
practical application within the meaning of the 2019 Guidance. 84 Fed.
Reg. at 52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field. 84 Fed. Reg. at 56;
MPEP § 2106.05(d).
The Examiner determines that “the claims recite only one generic
device that is programmed to determine aspects of information, such [as]
upper and lower confidence levels and question stability.” Final Act. 2.
Appellant’s arguments lack persuasive evidence that a generic
computer cannot be used for determining upper and lower confidence levels.
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Appeal Br. 6. Furthermore, Appellant’s Specification supports the
Examiner’s determination that a generic computer may be employed for the
claimed “electronic device” that receives the responses and makes the
claimed determinations:
FIGURE 2 illustrates an example of an electronic device
200, such as the devices 104-112 of the networked system 100
of FIGURE 1, in which certain aspects of various embodiments
of the disclosed technology may be implemented. The electronic
device 200 may include, but is not limited to, a personal
computing device such as a desktop or laptop computer, a mobile
electronic device such as a PDA or tablet computing device, a
mobile communications device such as a smartphone, an
industry-specific machine such as a self-service kiosk or
automated teller machine (ATM), or any other electronic device
suitable for use in connection with certain embodiments of the
disclosed technology.
Spec. 3.
For these reasons, we determine that claim 1 does not recite additional
elements that amount to significantly more than the judicial exception within
the meaning of the 2019 Guidance. 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to a judicial exception to patent-eligible
subject matter without reciting significantly more. We, likewise, sustain the
§ 101 rejection of claims 2–16, which Appellant does not argue separately.
Appeal Br. 6.

THE SECTION 103 REJECTION
Claims 1–16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Bhaskaran (US 2013/0004933 A1; published Jan. 3, 2013)
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and Klein (US 2014/0310062 A1; published Oct. 16, 2014). Final Act. 6–
10.
In rejecting claim 1, the Examiner finds that Bhaskaran discloses all
of the limitations except for the last step of the electronic device determining
whether the first question of the online survey is stable. Final Act. 6. The
Examiner finds that Klein teaches this limitation. Id. at 6–7 (citing Klein
¶¶ 31, 32, 38). The Examiner additionally finds that motivation existed “to
evaluate the quality of the question as disclosed by Klein . . . for the benefit
of improving the accuracy of responses and the ability to gain the
intelligence the marketer intends to understand.” Id. at 7.
Appellant presents two arguments regarding the obviousness rejection
of claim 1. We address these arguments separately.
I.
First, Appellant argues that Bhaskaran does not teach or suggest the
electronic device determining both upper and lower confidence levels based
on the plurality of received responses. Appeal Br. 7. Appellant argues that
the cited portions of Bhaskaran instead “merely describe a system receiving
‘a confidence threshold that identifies a relationship between a confidence
score and a valid response.’” Id.
This argument is unpersuasive. In addition to teaching that the
threshold may include a minimum value, Bhaskaran additionally teaches that
the threshold may include a range of values. Bhaskaran ¶ 31, cited in Final
Act. 6. A range, by definition includes upper and lower endpoints. See In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (explaining that there is no
ipsissimis verbis test for determining whether a reference discloses a claim
element and that identity of terminology is not required).
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II.
Appellant next argues that neither of the cited references “teach or
suggest ‘the electronic device determining whether the first question of the
online survey is stable based on the plurality of average daily responses in
relation to the upper and lower confidence levels over a specified period of
time.’” Appeal Br. 7. According to Appellant,
the [cited] paragr[a]phs merely provide that “[i]nformation and
feedback received from the end users 104 can be used in an
iterative manner by other end users and business user 108 to
develop further surveys, inspire new observations, and request
further information in an effort to refine and gain confidence in
information and intelligence for the project.” Klein simply does
not disclose determining whether an online survey question is
stable, let alone based on average daily responses in relation to
multiple confidence levels over a certain period of time.
Appeal Br. 7 (third bracketed change in original).
Appellant’s arguments are persuasive. Claim 1 specifically requires
that the electronic device is the entity that determines whether the survey
question is stable. The Examiner has not sufficiently demonstrated that
Klein teaches the last limitation of claim 1. Klein teaches a human making
determinations regarding the survey’s confidence. E.g., Klein ¶¶ 31, 32.
But even if we understand the Examiner to be interpreting the claim term
“stable” to mean that the survey responses are valid over some period of
time (Examiner’s Answer mailed Aug. 10, 2018 (“Ans.”), 4), the Examiner
has still not sufficiently demonstrated that Klein teaches a computer making
determinations regarding the survey’s stability, as claimed.

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Conclusion Regarding the Obviousness Rejection
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of independent claim 1. Accordingly, we
do not sustain the Examiner’s rejection of that claim or of claims 2–16,
which depend from claim 1.

CONCLUSION

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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–16 101 Eligibility 1–16
1–16 103 Bhaskaran, Klein 1–16
Overall
Outcome
1–16