Steven Dennis. Flinn et al.Download PDFPatent Trials and Appeals BoardOct 17, 201913269958 - (D) (P.T.A.B. Oct. 17, 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. 13/269,958 10/10/2011 Steven Dennis Flinn Many-09A1 4673 53928 7590 10/17/2019 MANYWORLDS, INC. IP DEPARTMENT 5476 BRIDLE CREEK LANE BRENHAM, TX 77833 EXAMINER BOYCE, ANDRE D ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 10/17/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVEN DENNIS FLINN and NAOMI FELINA MONEYPENNY ____________ Appeal 2018-005988 Application 13/269,958 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 7, 9, 12, and 18. 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 ManyWorlds, Inc. (Appeal Br. 3.) Appeal 2018-005988 Application 13/269,958 2 CLAIMED SUBJECT MATTER Appellant’s “invention relates to extending the business process paradigm so as to make processes more explicitly adaptive over time.” (Spec. 1, ll. 8–9.) Claims 7, 9, 12, and 18 are independent claims and are the only claims on appeal. Claim 7 is illustrative. It recites: 7. A method comprising: providing a representation of a physical site layout through use of a mobile processor-based device, wherein the representation of the physical site layout comprises a representation of a plurality of physical objects and their arrangement within a building, wherein the representation of the physical site layout is not generated based on a physical location behavior of a user; and wherein the representation of the plurality of physical objects is interpreted from pictorial information by application of a computer-implemented neural network; receiving a recommendation on a processor-based device, wherein the recommendation is generated in accordance with a plurality of usage behaviors and the representation of the physical site layout, wherein the recommendation comprises a first product; and receiving the recommendation, wherein the recommendation is based on an inference of a preference that is based on a plurality of inference weightings that are determined in accordance with usage behavior priority rules that are applied to the plurality of usage behaviors, wherein the plurality of usage behaviors are associated with a plurality of users. REJECTION Claims 7, 9, 12, and 18 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Appeal 2018-005988 Application 13/269,958 3 ANALYSIS “Whoever 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.” 35 U.S.C. § 101. Section 101, however, “‘contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. Under the two-step framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79). With regard to step one of the Alice framework, we apply a “directed to” two prong test to: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, 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 Appeal 2018-005988 Application 13/269,958 4 is more than a drafting effort designed to monopolize the judicial exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”). Here, the Examiner determines that claim 7 is “directed to the abstract idea of generating recommendations for a user” and that this is “similar to concepts involving an idea of itself, and human activity relating to concepts involving delivering user-selected content to mobile devices.” (Final Action 3.) Appellant disagrees and argues that the Examiner has failed “to fully consider the specific limitations of claim 7 and/or oversimplifies them.” (Appeal Br. 13.) Under step one of the Alice framework, we “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). The ‘directed to’ inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon . . . . Rather, the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’ Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In other words, the first step of the Alice framework “asks whether the focus of the claims is on the specific asserted improvement in [the relevant technology] or, instead, on a process that qualifies as an ‘abstract idea’ for Appeal 2018-005988 Application 13/269,958 5 which computers are invoked merely as a tool.” Id. at 1335–36; see also 2019 Guidance at 54–55. The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that the “invention relates to extending the business process paradigm so as to make processes more explicitly adaptive over time.” (Spec. 1, ll. 8–9.) Claim 7 provides further evidence. Claim 7 recites “providing a representation of a physical site layout . . . wherein the representation . . . comprises a representation of a plurality of physical objects and their arrangement within a building,”2 “receiving a recommendation . . . generated in accordance with a plurality of usage behaviors and the representation of the physical site layout, wherein the recommendation comprises a first product,” “and receiving the recommendation, wherein the recommendation is based on the inference of a preference.” In other words, claim 7 recites marketing or sales activities or behaviors as well as managing personal behavior by providing a product 2 Claim 7 also recites “wherein the representation of the plurality of physical objects is interpreted from pictorial information by application of a computer-implemented neural network.” But claim 7 does not recite how this interpretation is performed. It simply recites that it is performed by a computer-implemented neural network, for which no detail is provided. The Specification appears to refer to a neural network only with regard to statistical pattern matching where the Specification discloses that “[s]uch statistical pattern matching may include, but is not limited to, principle component analysis, semantic network techniques, Bayesian analytical techniques, neural network-based techniques, support vector machine-based techniques, or other statistical analytical techniques.” (Spec. 39, ll. 10–14; see also Response to the Office Action of April 28, 2017 at 5.) Appeal 2018-005988 Application 13/269,958 6 recommendation, i.e., claim 7 recites certain methods of organizing human activity. (See 2019 Guidance at 52.) Claim 7 achieves the claimed method by providing information through a mobile processor-based device, and receiving information in the form of a recommendation on a processor-based device. The Specification discloses the use of a “standard PC workstation” and a “portable processing device . . . , such as a mobile telephony device,” i.e., generic processor-based devices. (Spec. 103, ll. 3–13; see also Answer 11.)3 “[W]e have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas.” Elec. Power Grp., 830 F.3d at 1353. “In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Id. at 1354. Additionally, the Federal Circuit has “recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” Id. In view of the above, we determine that claim 7 is directed to marketing or sales activities or behaviors, and managing personal behavior 3 With regard to the recitation in claim 7 of “a computer-implemented neural network,” the recitation is merely generic. There is no explanation as to how the network operates. Appellant’s brief does not point to any additional explanation in the Specification regarding such a neural network. We agree with the Examiner that the claimed invention “is not directed to neural networking or any other type of statistical matching. Rather, Appellant is simpl[y] using old and well known techniques.” (See Answer 11.) Appeal 2018-005988 Application 13/269,958 7 by providing a product recommendation, i.e., claim 7 is directed to the abstract idea of certain methods of organizing human activity. (See 2019 Guidance at 52.) Although we and the Examiner describe, at different levels of abstraction, to what the claims are directed, it is recognized that “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does not, “impact the patentability analysis.” See id. at 1241. Regardless, we do not see how the generic recitation of a “mobile processor-based device,” a “processor-based device,” and a “computer- implemented neural network,” even in conjunction with the recited functions, “ensure[s] ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Alice, 573 U.S. at 221 (alterations in original) (quoting Mayo, 566 U.S. at 77). Claim 7 merely uses generic processor/computer devices as tools to perform the abstract idea. Nonetheless, Appellant seeks to analogize claim 7 to the claims in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). (See Appeal Br. 14.) Specifically, Appellant argues that claim 7 clearly represents an improvement to a technological process-- specifically, a recommender method that generates a recommendation for a system user that is based on a combination of: 1) neural network-based interpretations of physical objects from pictorial information that is associated with a physical site and, 2) an inference of a preference that is based on a plurality of inference weightings that are determined in accordance with usage behavior priority rules that are applied to the plurality of usage behaviors. (Id.) We do not find this argument persuasive. Appeal 2018-005988 Application 13/269,958 8 Claim 7 uses a generically recited mobile processor-based device, processor-based device, and computer-implemented neural network to perform the abstract idea, i.e., certain methods of organizing human activity. This does not improve the processor-based devices or the computer- implemented neural network. In McRO, on the other hand, “[t]he claimed improvement was to how the physical display operated (to produce better quality images).” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). In other words, in McRO, data was used to improve the technology, i.e., the display mechanism. Here, claim 7 recites providing information through a generically recited mobile processor-based device, receiving information in the form of a recommendation on a generically recited processor-based device, and an interpretation by a generically recited computer-implemented neural network. But Appellant does not sufficiently explain how these steps improve the technology itself. Claim 7 does not even recite “a particular way of programming or designing the software . . . , but instead merely claim[s] the resulting [method].” Apple, Inc., 842 F.3d at 1241. In short, claim 7 merely recites the functional results to be achieved. With regard to Appellant’s argument regarding the inference of a preference based on weightings being an improvement to a technological process, we disagree. (See Appeal Br. 13–14.) As discussed above, the inference of a preference is part of the ineligible concept, and “[i]t 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.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). In other words, Appeal 2018-005988 Application 13/269,958 9 “[i]f a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” Id. at 1290–91. In view of the above, Appellant has not persuaded us that the Examiner erred in determining that claim 7 is directed to the abstract idea of certain methods of organizing human activity. (See Final Action 3; see also 2019 Guidance at 52.) Step two of the Alice framework has been described “as a search for an ‘ “inventive concept” ’ –i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73). Appellant argues that the limitations of claim 7 “clearly represent non- conventional and non-routine technical features” and, in view of the threshold set in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), “qualify as significantly more than any legitimately posited abstract idea.” (Appeal Br. 15–16.) We disagree. In BASCOM, the court determined that “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” BASCOM, 827 F.3d at 1350. Specifically, “[t]he inventive concept described and claimed in the ’606 patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” Id. at 1350. The Federal Circuit determined that this “particular arrangement of elements is a technical improvement over prior art ways of filtering.” Id. Here, Appellant Appeal 2018-005988 Application 13/269,958 10 does not contend, and claim 7 does not specify, that the recited mobile processor-based device, the processor-based device, and the computer- implemented neural network must be arranged in a non-conventional manner or even in any particular manner. Nor does Appellant explain how the claimed method allegedly improves the function of the mobile processor- based device, the processor-based device, or the computer implemented neural network. See, e.g., BSG Tech LLC, 899 F.3d at 1288) (“[A]n improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality.”). Moreover, the asserted technical improvement, i.e., “a recommender method that generates a recommendation for a system user” (Appeal Br. 14), is, at best, an improvement to the abstract idea. But “[n]o matter how much of an advance in the . . . field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” SAP Am., Inc., 898 F.3d at 1163. Appellant also seeks to analogize claim 7 to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (Appeal Br. 16–17.) Appellant argues that, like the claims in DDR Holdings, claim 7 solves “a specific problem that is rooted in computer technology.” (Id. at 16.) We disagree and “caution . . . that not all claims purporting to address Internet-centric challenges are eligible for patent.” DDR Holdings, 773 F.3d at 1258. Here, the asserted improvement is to a method of organizing human activity, and, in particular, to generating recommendations for a user. In contrast, the claims in DDR Holdings “specify how interactions with the Internet are manipulated to yield a desired result –– a result that overrides Appeal 2018-005988 Application 13/269,958 11 the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d at 1258 (emphasis added). Appellant does not persuasively argue why generating recommendations for a user is analogous to “overrid[ing] the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” See id. Taking the claim elements separately, the functions performed by the generically recited computer components are purely conventional. Providing information and receiving information are well-understood, routine, and conventional functions previously known to the industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims “do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology. The claims therefore do not state an arguably inventive concept . . . .”); see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”). Considered as an ordered combination, the generically recited computer components of Appellant’s claimed invention adds nothing that is not already present when the limitations are considered separately. For example, claim 7 does not, as discussed above, purport to improve the functioning of either processor-based device itself or of the computer- implemented neural network. Nor does it effect an improvement in any other technology or technical field. Instead, claim 7 amounts to nothing significantly more than an instruction to apply the abstract idea using generic Appeal 2018-005988 Application 13/269,958 12 computer components performing routine computer functions. That is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. In view of the above, we are not persuaded that the Examiner erred in rejecting claim 7 under § 101. Claims 9, 12, and 18 contain similar limitations and Appellant makes similar arguments. (See Appeal Br. 17–30.) For similar reasons, we are not persuaded that the Examiner erred in rejecting claims 9, 12, and 18 under § 101. CONCLUSION The Examiner’s rejection of claims 7, 9, 12, and 18 under 35 U.S.C. § 101 is affirmed. Specifically: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 7, 9, 12, 18 101 eligibility 7, 9, 12, 18 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