Peter Clarke et al.

Patent Trials and Appeals Board

Sep 21, 2021

2020006780 (P.T.A.B. Sep. 21, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/847,079 12/19/2017 Peter J. Clarke FIU.253 6018
23557 7590 09/21/2021
SALIWANCHIK, LLOYD & EISENSCHENK
A PROFESSIONAL ASSOCIATION
P.O. BOX 142950
GAINESVILLE, FL 32614
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/21/2021 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):
euspto@slepatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER J. CLARKE, RAYMOND CHANG LAU, STEVE FOO,
and DEBRA DAVIS
____________

Appeal 2020-006780
Application 15/847,079
Technology Center 3700
____________

Before BIBHU R. MOHANTY, JAMES P. CALVE, and
CYNTHIA L. MURPHY, 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 1–6, 9, 10, 12–16, and 18–23. 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 The Florida
International University Board of Trustees. (Appeal Br. 1).
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a learning management
system that can be dynamically configured for a specific course by selecting
learning content and using learning and engagement strategies (Spec. page 1,
para. 3). Claim 1, reproduced below with the italics added, is representative
of the subject matter on appeal.

1. An educational content and learning management system,
the system comprising:
a non-transitory computer-readable storage medium
comprising instructions stored thereon;
a graphical user interface in operable communication
with the non-transitory computer-readable storage medium;
an application programming interface providing a
connection between the graphical user interface and the non-
transitory computer-readable storage medium; and
a communication link for connecting the non-transitory
computer-readable to at least one computing device,
the stored instructions, when executed cause at least one
processor to:
permit a system administrator to enable at least one
engagement strategy (ELES) selected from collaborative
learning elements, gamification elements, problem-based
learning elements, and social interaction elements;
permit the system administrator to selectively populate
respective instances of educational courses with at least one of
learning objects, course materials, educational tutorials, and
virtual problem-based environments, which are used in the
context of the at least one ELES selected from collaborative
learning elements, gamification elements, problem-based
learning elements, and social interaction elements;
permit an educational course instructor to select which
of the at least one of the learning objects, the course materials,
the educational tutorials, and the virtual problem-based
environments is provided to a student of the educational course
instructor;
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if the gamification elements ELES is enabled, assign a
value of virtual points awarded to the student for each learning
object; and
add, modify, or delete the learning objects, the course
materials, the virtual problem-based environments, the
gamification elements, the problem-based learning elements,
and the social interaction elements, selected by the educational
course instructor, for the student based upon the at least one
ELES enabled, each learning object comprising a single
learning objective, learning material focused on the single
learning objective of an educational course, facts and key
concepts related to the single learning objective of an
educational course, exercises and quiz-type self-tests, and
assessment metrics on whether the student has achieved the
single learning objective of the educational course,
each virtual problem-based environment being an
interactive development environment or virtual laboratory that
provides the student problems related to the educational course,
the gamification elements comprising an icon or avatar to
represent the student in an online environment, an assignment
system that assigns virtual points, merit based rewards
including at least one of virtual badges and virtual trophies,
and a virtual tournament between students of an educational
course,
the problem-based learning elements being configured to
solve educational problems in the virtual problem-based
environment,
the social interaction elements comprising a user profile,
a discussion board, a group or individual chat room, and ratings
or comments regarding a learning object, and
the educational content and learning management system
further comprising: a plurality of containers respectively
configured to implement a plurality of microservices
corresponding to the learning objects, course materials,
educational tutorials, virtual problem-based environments,
collaborative learning elements, gamification elements,
problem-based learning elements, and social interaction
elements; and a gateway connected to the plurality of
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containers such that all of the microservices of the plurality of
microservices interact with the gateway, and
the microservices of the plurality of microservices
dynamically interacting with each other based on the at least
one ELES enabled.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Name Reference Date
Zelin US 2012/0156668 A1 June 12, 2012
Morisset US 2015/0010894 A1 Jan. 8, 2015
O’Kennedy US 2018/0270211 A1 Sept. 20, 2018
Clarke, IV US 2019/0043380 A1 Feb. 7, 2019

The following rejections are before us for review:
1. Claims 1–6, 9, 10, 12–16, and 18–23 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter without
significantly more.
2. Claims 1, 2, 6, and 21 are rejected under 35 U.S.C. § 103 under
Morisset, O’Kennedy, and Clarke.
3. Claims 3–5, 9, 10, 12–16, 18–20, 22, and 23 are rejected under
35 U.S.C. § 103 as unpatentable over Morisset, O’Kennedy, and Zelin.

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 evidence.2

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).
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ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim has not been considered as a whole and is not directed to an
abstract idea (Appeal Br. 7–10). The Appellant argues further that the claim,
even if the claim were an abstract concept, is “integrated into a practical
application” (Appeal Br. 10). The Appellant also argues that the claim is
“significantly more” than any abstract concept (Appeal Br. 10).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 3–6; Ans. 4–9).
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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus 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 . . . .”).
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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, 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 (1853))); 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
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.”).
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In January 2019, the USPTO 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 MPEP3 § 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.
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

3 The Manual of Patent Examining Procedure (“MPEP”) (9th ed. Rev.
10.2019, rev. June 2020).
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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. (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.
The Specification indicates that the invention generally relates to
learning management systems that can be dynamically configured for a
specific course by selecting learning content and using learning and
engagement strategies (Spec. 1, para. 3). Here, the Examiner has determined
that the claim sets forth a mental process or method of organizing human
activities and abstract concept (Ans. 4, 5). We substantially agree with the
Examiner. We determine that the claim sets forth the subject matter in
italics above which describes the concept of: [1] “permit[ing] a system
administrator to enable at least one engagement strategy (ELES) selected
from collaborative learning elements, gamification elements, problem-based
learning elements, and social interaction elements”; [2] “permit[ing] the
system administrator to selectively populate respective instances of
educational courses with at least one of learning objects, course materials,
educational tutorials, and virtual problem-based environments”; [3]
“permit[ing] an educational course instructor to select which of the at least
one of the learning objects, the course materials, the educational tutorials,
and the virtual problem-based environments is provided to a student of the
educational course instructor”; [4] and “if the gamification elements ELES
is enabled, assign[ing] a value of virtual points awarded to the student”; and
[5] “an assignment system that assigns virtual points, merit based rewards
including at least one of virtual badges and virtual trophies, and a virtual
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tournament between students of an educational course”; which is a certain
method of organizing human activities, or mental process, in organizing a
learning course based on engagement strategies i.e., a judicial exception.
The claim here sets forth a method of organizing teaching materials for a
course, or the mental process of a teacher selecting learning content based on
learning and engagement strategies, which is method of organizing human
activities or a mental process and an abstract concept. A method, like the
claimed method, “a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014).
We next determine whether the claim recites additional elements in
the claim 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).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular 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 the claim, the additional elements beyond the abstract
idea are the recited “processor,” “storage medium,” and “graphical user
interface.” These are described in the Specification as generic computer
components (Spec., pages 14, 15). The claimed limitations of “permit[ing],”
“assign[ing],” “add[ing],” “modify[ing],” “delet[ing],” and “interacting” as
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recited “do not purport to improve the functioning of the computer itself,” do
not improve the technology of the technical field, and do not require a
“particular machine.” Rather, they are performed using generic computer
components. Further, the claim as a whole fails to effect any particular
transformation of an article to a different state. The recited steps in the
claim fail to provide meaningful limitations to limit the judicial exception.
In this case, the claim merely uses the claimed computer elements as a tool
to perform the abstract idea.
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 conventional. Alice, 573 U.S. at 217.
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 as set forth in the Revised Guidance which references
the Manual of Patent Examining Procedure §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, 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.
Considering the claim both individually and as an ordered combination fails
to add subject matter 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
page 15 for example describes using conventional computer components
such as laptop computer, server, cell phone, or tablet in a conventional
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manner. The claim specifically includes recitations for computers to
implement the method but these computer components are all used in a
manner that is well-understood, routine, and conventional in the field. Here,
the claimed generic computer components which are used to implement the
claimed method are well understood, routine, or conventional in the field.
Here, the claim has not been shown to be “significantly more” than the
abstract idea.
The Appellant at page 8 of the Appeal Brief has also cited to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the
claim is not abstract but the claims in that case were not similar in scope to
those here and were in contrast directed to a self-referential data table. The
Appellant at page 8 of the Appeal Brief have 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.
Further, here, as in Alice, “the system claims are no different from the
method claims in substance. The method claims recite the abstract idea
implemented on a generic computer; the system claims recite a handful of
generic computer components configured to implement the same idea.”
Alice, 573 U.S. at 226. “[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea ‘while adding the words ‘apply it’ is not enough for
patent eligibility.” Id. at 223 (quoting Mayo, 566 U.S. at 72).
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining claims which
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are drawn to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.

Rejection under 35 U.S.C. § 103
The Appellant argues that the rejection of claim 1 is improper because
the rejection is based on hindsight reconstruction by picking and choosing
features of the claimed invention from the cited references (Appeal Br. 14)
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 7–11; Ans. 10).
We agree with the Examiner. In KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398 (2007) the Court stated that when considering obviousness that
“the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id. at 418. In KSR the Court also affirmed that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. at 416.
Here, the Appellant has not provided any arguments for missing claim
elements, and instead argues that the rejection uses improper hindsight
(Appeal Br. 14, 15). We agree with and adopt the Examiner’s rationale for
the rejection. Here, Morisset has disclosed the invention substantially as
claimed showing a system and method for delivering online educational
courses (Title, Abstract, Figs. 1–7). O’Kennedy discloses using
containerized systems for the ability to scale out horizontally (para. 24).
Clarke discloses the use of gamification to increase engagement through
points and rewards and the use of an avatar (paras. 78, 117). Here, one of
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ordinary skill in the art would have seen the advantage of modifying
Morisset’s system for delivering online educational courses to include
containerized systems to increase scaling as taught by O’Kennedy, and to
use gamification and an avatar as taught by Clarke to increase engagement
in the learning system as an obvious, predictable combination of familiar
elements for their known functions. For these reasons, the rejection of claim
1 is sustained. The Appellant has provided the same arguments for the
remaining claims and the rejection of these claims is sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–6, 9, 10, 12–16, and 18–23 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 2, 6, and 21 under 35 U.S.C. § 103 over Morisset,
O’Kennedy, and Clarke.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 3–5, 9, 10, 12–16, 18–20, 22, and 23 under 35 U.S.C. § 103
as unpatentable over Morisset, O’Kennedy, and Zelin.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 9, 10,
12–16, 18–
23
101 Eligibility 1–6, 9, 10,
12–16, 18–
23

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1, 2, 6, 21 103 Morisset,
O’Kennedy,
Clarke
1, 2, 6, 21
3–5, 9, 10,
12–16, 18–
20, 22, 23
103 Morisset,
O’Kennedy, Zelin
3–5, 9, 10,
12–16, 18–
20, 22, 23

Overall
Outcome
1–6, 9, 10,
12–16, 18–
23

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