Ex Parte Haertel et alDownload PDFPatent Trial and Appeal BoardAug 21, 201814167146 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/167,146 01/29/2014 28863 7590 08/23/2018 SHUMAKER & SIEFFERT, P.A. 1625 RADIO DRIVE SUITE 100 WOODBURY, MN 55125 FIRST NAMED INVENTOR Geneva D. Haertel 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1248-023US01/6857-2 9742 EXAMINER EGLOFF, PETER RICHARD ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): pairdocketing@ssiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GENEVA D. HAERTEL, TERRY VENDLINSKI, DAISY RUTSTEIN, ANDREW SALSBURY, CHRIS MAKLER, PATRICIA SCHANK, and JOHN J. BRECHT Appeal2017-009574 Application 14/167, 146 Technology Center 3700 Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and BRENT M. DOUGAL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 1-3, 5-9, and 11-23 that "have been at least twice 1 According to Appellants, the real party in interest is SRI International. App. Br. 2. Appeal2017-009574 Application 14/167, 146 rejected." App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we AFFIRM the Examiner's rejections. THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates generally to educational assessment design, and relates more particularly to systems for constructing evidence-centered designed educational assessment items. "2 Spec. ,r 1. In other words, the disclosed subject matter relates to "[a] system for guiding a user in a construction of' questions [i.e., a test] designed to evaluate a student's knowledge. Spec. ,r 6. Claims 1, 15, and 18 are independent. Claim 1 is illustrative of the claimed subject matter and is reproduced below: 1. A method for guiding a user in a construction of an assessment item, the method comprising: identifying a requirement of the assessment item, wherein the identifying comprises: presenting a plurality of selectable assessment targets, and receiving a signal from the user indicating a selection of an assessment target from among the plurality of selectable assessment targets; filtering a plurality of documents in accordance with the identified requirement to produce a set of relevant documents; presenting a workflow for use in constructing a proposed assessment item, wherein the workflow is based on the set of relevant documents, and wherein the workflow comprises a sequence of prompts relating to the identified requirement; 2 Appellants' Specification states, "[w]ithin the context of the present invention, an 'assessment item' is a[ n] article (e.g., a question) that is designed to gather information useful in evaluating a student's knowledge, skill, or ability (i.e., what he knows, can do, or has accomplished or learned)." Spec. ,r 14. 2 Appeal2017-009574 Application 14/167, 146 presenting a set of questions to the user, the set of questions comprising guides to verify that the proposed assessment item meets the identified requirement; receiving responses to the set of questions from the user; and validating whether the proposed assessment item meets the identified requirement based, at least in part, on the received responses. REJECTIONS ON APPEAL 3 Claims 1-3, 5-9, and 11-23 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1-3, 5-9, and 11-23 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. ANALYSIS The rejection of claims 1-3, 5-9, and 11-23 as being directed to a judicial exception Appellants argue all the claims together. App. Br. 6-7. We select independent claim 1 for review, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Appellants understand that the Examiner rejected claim 1 "as being directed to an abstract idea without significantly more." App. Br. 6. This follows the Examiner's multi-part analysis regarding the subject matter recited in claim 1. See Non-Final Act. 2--4. Appellants disagree with the 3 The rejection of claims 1-3, 5-9, and 11-23 under 35 U.S.C. § 112, second paragraph, as being indefinite, has been withdrawn. Ans. 7. 3 Appeal2017-009574 Application 14/167, 146 Examiner's assessment and address the "validating" step stating, "the unconventional combination of validating ... , in combination with the other recited processes" renders claim 1 patentable subject matter. App. Br. 6. This is because, according to Appellants, "the Examiner withdrew the previous rejections of the claims under 35 U.S.C. § 103," thereby "acknowledging that the claims are inventive with respect to the teachings of the cited art." App. Br. 6-7; Reply Br. 2 ("the claimed functions are new" because the Examiner "previously withdr[ew] the prior art rejections"). Thus, Appellants conclude, "the combination of processes and elements operates in a nonconventional and non-generic way," and as such, "the claims recite inventive concepts under the Supreme Court's test for subject matter eligibility." App. Br. 7; see also Reply Br. 2. The Examiner rightfully responds stating, "the test for patent eligibility under § 101 is separate and distinct from the tests for novelty and patent eligibility under§ 102 and§ 103." Ans. 7 (referencing Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner further reiterates, "the instant invention focuses on a combination of abstract idea processes, namely collecting requirements information from a user, obtaining documents based on the information, collecting further information from the user through responses to questions, and performing a validation based on the information and the documents." Ans. 8; see also Non-Final Act. 2-3. As to any "additional limitations," the Examiner states that such "limitations are limited to routine and conventional computer technology as detailed above and do not reflect an improvement to the functioning of a computer or to any particular technological area." Ans. 8; see also Non-Final Act. 3--4. The Examiner concludes, "[a]s in EPG, the 4 Appeal2017-009574 Application 14/167, 146 inventive concept is thus drawn to an abstract idea, not to any inventive technology for performing the abstract idea." Ans. 8. Appellants also address the above case contending, "[i]n the present application, however, the claimed functions are new" and that "[t]he Examiner acknowledged this by previously withdrawing the prior art rejections." Reply Br. 2; see also App. Br. 6-7. Thus, Appellants repeat the contention that because "the claimed functions themselves are new ... [the claims] recite inventive concepts under the Supreme Court's test for subject matter eligibility." Reply Br. 2. As indicated above, Appellants repeatedly rely on the Examiner's withdrawal of a prior art rejection as an indication that the recited combination of steps is new and novel, and thus proper subject matter for patentability. However, Appellants' argument, premised on the Examiner's withdrawal of a Section 103 rejection, is not persuasive that the Examiner erred in categorizing claim 1 as being directed to ineligible subject matter under Section 101. For example, we have been instructed that "[t]he § 101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies in one of the four categories, it must also satisfy 'the conditions and requirements of this title,' § lOl(a), including novelty, see§ 102, nonobviousness, see§ 103, and a full and particular description, see§ 112."4 4 The Supreme Court expressed a similar need to satisfy all the requirements of the Patent Laws stating: we must distinguish between patents that claim the "buildin[g] block[s]" of human ingenuity and those that integrate the building blocks into something more [citation omitted], thereby "transform[ing]" them into a patent-eligible invention[ citation omitted]. The former "would risk disproportionately tying up the use of the underlying" ideas [citation omitted], and are 5 Appeal2017-009574 Application 14/167, 146 Bilski v. Kappas, 561 U.S. 593, 594 (2010); see also id. at 602. Hence, Appellants' argument that the claims are directed to patentable subject matter under Section 101 because the Examiner withdrew a prior art rejection is not persuasive that the recited claims are, indeed, directed to patentable subject matter. The rejection of claims 1-3, 5-9, and 11-23 as failing to comply with the written description requirement Appellant argues claims 1-3, 5-9, and 11-23 together. App. Br. 7-9. We select independent claim 15 for review, with the remaining claims standing or falling therewith. See 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner references the last two limitations which are directed to "receiving responses ... from the user" and "validating ... based, at least in part, on the received responses." Non-Final Act. 4--5. The Examiner states, "it appears [ that such steps occur] by the processor or other entity receiving the responses, not by the user." 5 Non-Final Act. 4--5; see also Ans. 9. The Examiner explains, "[t]he specification does not provide support for such a feature of the other entity or processor making the determination" and as therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws. Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354--55 (2014). See also id. at 2357 (stating that because the algorithm was an abstract idea, the claim had to supply a 'new and useful' application of the idea in order to be patent eligible). 5 Claim 15 recites, "the program causes a processor to perform steps of: ... receiving responses ... and validating ... based, at least in part, on the received responses." 6 Appeal2017-009574 Application 14/167, 146 such, "the specification does not appear to provide support for the claimed features." Non-Final Act. 5; see also Ans. 9. Appellants reference several paragraphs in Appellants' Specification in an effort to show that written description support exists for such language. See App. Br. 7-9 (referencing ,r,r 6, 16, 18, 23, 27); see also Reply Br. 4. Appellants address each referenced paragraph stating, (a) Paragraphs 6 and 16 discuss a "user interface" used "to lead the user;" (b) Paragraph 18 is directed to a server "guiding" the "validation;" (c) Paragraph 23 addresses a "user endpoint device [that] receives responses from the user and sends a signal to the server that is representative of that response;" and, ( d) Paragraph 27 pertains to a "user interface [that] presents a set of questions for use in the validation phase." Reply Br. 4. Thus, Appellants contend, "the 'validating' feature is described in the specification as being based on the inputs received from the user at the user interface." Reply Br. 4. However, the issue raised by the Examiner is not whether or not there is written description support for the recitation "based, at least in part, on the received responses" as recited. Instead, the Examiner is questioning whether there is written description support for the processor or other entity (i.e., "not by the user") performing the validation step because "the invention as claimed requires the program or system ... to actively perform the validation," and, according to the Examiner, this is not disclosed. Non-Final Act. 4--5; Ans. 9. The Examiner further relies on Appellants' own disclosure to the effect that "[i]t is noted that the set of questions alone is typically not enough to entirely validate the potential assessment item" thereby undercutting at least point (d) above made by Appellants. Non-Final Act. 5 (referencing Spec. ,r 27). 7 Appeal2017-009574 Application 14/167, 146 Our review of Appellants' Specification leads to the same conclusion as reached by the Examiner. For example, original independent claims 1 and 15 recited that the validation is "by the user." Further, Appellants' Abstract and Summary of the Invention also clearly disclose validation "by the user." See Spec. ,r,r 4, 5. As is evident, original independent claim 15 has been amended so as to now recite that the validation step is no longer performed "by the user," but instead by a "processor." The Examiner thus ( correctly) asks where written description support for this change to a processor exists. See Non-Final Act. 4--5. Appellants' contentions above are not persuasive that such support exists. Accordingly, and in view of the record presented, we agree with the Examiner that Appellants' identified "sections of the specification do not disclose that the server performs the validation, but instead disclose the user performs the validation with the server acting as a passive guide. " 6 Ans. 9. Consequently, we sustain the Examiner's rejection of claims 1-3, 5-9, and 11-23 as failing to comply with the written description requirement. DECISION We affirm the Examiner's rejections of claims 1-3, 5-9, and 11-23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(±). AFFIRMED 6 It is also the situation that Appellants' Specification, lacking proper written description support, also lacks proper enablement of the recited claims as well. 8 Copy with citationCopy as parenthetical citation