Ex Parte Peterson et al

Patent Trial and Appeal Board

Nov 30, 2018

12494154 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/494,154 06/29/2009
20995 7590 12/04/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Matthew R. Peterson
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.
MIND.006Cl 1696
EXAMINER
EGLOFF, PETER RICHARD
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW R. PETERSON and
MARK BODNER
Appeal2018-002597
Application 12/494,154
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
LEE L. STEPINA, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's non-final rejection of claims 1-7, 9-14, 16-23, 25-38, 40, 41,
46-49, and 52-67. App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b ). For the reasons explained below, we do not find error in the
Examiner's rejection of these claims. Accordingly, we AFFIRM the
Examiner's rejection.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to training, and more
particularly, to use a virtual apparatus via a computer animation executed by
a computer environment without needing language interaction." Spec. ,r 2.
Appeal2018-002597
Application 12/494,154
Claims 1, 7, 23, and 25-35 are independent. Claim 1 is illustrative of the
claims on appeal and is reproduced below.
1. A method of academic subject training in
conjunction with a computer animation executed by a computing
environment including a processor and a display, the method
compnsmg:
for each of a plurality of category areas related to the
academic subject, creating a logical construct including
establishing a set of consistent rules, so that each of the related
academic subject area categories has a corresponding and
appropriate set of consistent rules;
displaying, via the processor and the display, a virtual
apparatus with virtual components that are manipulated by a user
being trained;
teaching the user to understand logically consistent goals
by operating the virtual apparatus in an impoverished video
environment and without language interaction, and providing at
least one of the virtual components of the virtual apparatus which
can be manipulated;
modeling, via the processor, properties and the set of
consistent rules for a particular one of the academic subject area
categories to the user by the virtual apparatus without language
interaction;
teaching the user to operate the virtual apparatus without
language interaction; and
allowing the user to operate the virtual apparatus,
including manipulating the virtual components, and/ or selecting
answer choices defined by the virtual apparatus to reach goals in
a sequence of problems having progressive difficulty and
without language interaction,
wherein teaching the user to understand logically
consistent goals comprises animating the result of manipulating
the at least one of the virtual components to show how a path is
changed from impassable to passable, wherein in the
impoverished video environment only essential images are
included in the animation, wherein essential images include only
those images directly involved in a problem and its solution, and
wherein there is no output on the display not involved in a
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problem's solution, and wherein without language interaction
relies on spatial-temporal reasoning interaction, and
wherein the academic training is without intervention and
instruction by a teacher, wherein the display of the virtual
components includes at least one predetermined virtual
component that is configured as being transformable between a
displayable graphical representation and a corresponding,
displayable language/symbol representation, and wherein upon
meeting a criterion related to the particular one of the academic
subject area categories, the at least one transformable virtual
component is indicated to be transformed from the displayable
graphical representation to the displayable language/symbol
representation, wherein the criterion related to the particular one
of the academic subject area categories includes mastery of the
academic subject area category by the user while using the
displayable graphical representation for the transformable virtual
component(s) of the academic subject area category.
THE REJECTION ON APPEAL 1, 2
Claims 1-7, 9-14, 16-23, 25-38, 40, 41, 46-49, and 52----67 are rejected
under 35 U.S.C. § 101 on the basis that 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.
ANALYSIS
Appellants argue all the claims (i.e., claims 1-7, 9-14, 16-23, 25-38,
40, 41, 46-49, and 52-67) together. See App. Br. 27-34; Reply Br. 3-13.
Appellants also argue each of claims 28 and 61 separately. App. Br. 35-36.
1 The Examiner does not list dependent claims 66 and 67 (see Non-Final
Act. 2), but Appellants understand that these two claims are included in the
above rejection. See App. Br. 1.
2 "Applicant's reply has overcome the following rejection(s): the rejection of
claims 1-7, 9-14, 16-23, 25-38, 40, 41, 46-49 and 52----65 under section 112
1st paragraph and 2nd paragraph." Advisory Action dated July 21, 2017.
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We select independent claim 1 and dependent claims 28 and 61 for review,
with the remaining claims standing or falling with the claim from which they
depend. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
The Examiner recites the limitations of method claim 1 and concludes
that they represent "a series of mental steps that could be carried out solely
by a person using for example a pen and paper." Non-Final Act. 2, 3.
Afterwards, the Examiner alters this stance stating, "it is noted that the
instant rejection does not explicitly rely on a pen and paper characterization
of the claimed concept; instead, the instant rejection notes the similar[ity] of
the claimed process to that in EPG." 3 Ans. 9. Upon again concluding the
claimed invention is "directed to an abstract idea" as in EPG, the Examiner
proceeds to "step 2B of the Alice/Mayo Test" which addresses "the
additional elements in the claim." Ans. 6. On this topic, the Examiner
concludes that, "when taken alone or in combination, [ the additional
elements] are not sufficient to amount to significantly more than the judicial
exception." Ans. 6. This is "because the additional elements or combination
of elements in the claims other than the abstract idea per se amount to no
3 The reference to "EPG" is to Elec. Power Grp. v Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016). Ans. 6. Regarding this case, the Examiner states,
"[t ]he instant invention is directed to a similar method of collecting
information (input from the user manipulating a virtual apparatus or
selecting an answer choice), analyzing it ( determining if the input represents
a correct solution), and displaying certain results of the collection and
analysis (animating results of the manipulating or selecting)." Ans. 6. The
Examiner concludes, "[u]tilizing this concept in a computer animation
merely represents the use of a computer and well-known animation
techniques as a tool to move this pre-computer concept to a computerized
environment." Ans. 6.
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more than: requiring no more than a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry." Ans. 6-7.
We have recently been informed that "whether claim limitations recite
activities that were well-understood, routine, and conventional in the
relevant field at a particular point in time ... is a question of historical fact,
not a legal question of claim scope." Berkheimer v. HP Inc., 890 F.3d 1369,
1371 n 3 (Fed. Cir. 2018). However, we have also been instructed that
"[r]elying on the specification alone may be appropriate where ... the
specification admits as much." Berkheimer, 890 F.3d at 1371 (emphasis in
original). This latter situation is applicable here because Appellants'
Specification describes, in very broad and general terms, what the recited
"computer" or "computing environment" (see claim 1) "may be" or "may
include." Spec. ,r,r 46, 47. In the present case, the Examiner
specifically references Paragraph 46 of Appellants' Specification and states,
"claim 1 merely recites displaying a desired animation with selectable
components on a display screen of a computer, in order to implement the
claimed teaching process and concepts of self-discovery and learning by
doing in a generic computer environment." Ans. 7. The Examiner
summarizes, "these additional claim elements do not provide meaningful
limitations to transform the abstract idea into a patent eligible application of
the abstract idea." Ans. 7. The Examiner concludes, "the claims are
rejected under 35 U.S.C. [§] 101 as being directed to non-statutory subject
matter" and further states that the dependent claims "inherit the deficiencies
of their respective parent claims." Ans. 7; see also id. at 8.
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Appellants disagree with the Examiner's analysis arguing instead
"that these claims should also be examined using the streamlined analysis"
(such analysis being that disclosed in Example 27 found in the "July 2015
Update Appendix 1 at p. 21"). App. Br. 27; see also Reply Br. 3---6, 8-9.
Appellants explain "that 'when [claims] viewed as a whole[] clearly do[] not
seek to tie up any judicial exception such that others cannot practice it[,]
[ s ]uch claims do not need to proceed through the full [Section 101] analysis
... as their eligibility will be self-evident.' Interim Guidance at [p.] 74,625."4
App. Br. 27; Reply Br. 3. On this point, Appellants further state that
although "preemption may not be 'a standalone test for eligibility' (see, May
2016 Update at 6-7), the Federal Circuit has recently reaffirmed the
relevance of preemption to the section 101 inquiry." App. Br. 27
(referencing Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1349-52 (Fed. Cir. 2016)).
However, regarding the matter of preemption, we have more recently
been instructed that "' [ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."' Roche Molecular Systems v. Cepheid, 905 F.3d 1363,
1374 (Fed. Cir. 2018) (quotingAriosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015)). In other words, as per the Examiner,
"preemption is not a stand-alone test for eligibility." Ans. 9. Accordingly,
4 Appellants assert "[ c ]laim 1 similarly does not tie up an abstract idea
because the claim requires a well-defined type of video environment
(impoverished) that contains an animated virtual apparatus including a
virtual component that can switch between a graphical and language
representation." Reply Br. 8.
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we do not fault the Examiner for performing a full analysis in lieu of a
streamlined analysis.
Appellants also challenge the Examiner's reliance on EPG, stating
As explained by Electric Power Group, 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."
Reply Br. 6 (quoting Elec. Power Grp., 830 F.3d at 1354). In other words,
per Appellants, "Electric Power Group, specifically contemplates that
particular tools for displaying information are not abstract ideas." Reply Br.
6. Hence, Appellants' "claims fit neatly into the exception identified by
Electric Power Group, because they specify a particular tool for
presentation, a virtual apparatus that allows the manipulation of
transformable virtual components." Reply Br. 6. More precisely,
Appellants'
use of a computer animated user interface with a virtual
component transformable between a graphical representation
and a corresponding displayable language/symbol
representation is a technological solution that allows the
graphical user interface to relabel graphical elements with
language elements, thereby introducing language elements to
the user.
Reply Br. 7. Hence, it appears that the basis for Appellants' contention that
EPG is not applicable is due to (a) the specification of "a particular tool"
that permits virtual components to be manipulated; and, (b) the tool or
interface "is a technological solution." See supra.
Neither assertion is persuasive. First, as indicated above, given the
broad scope of the claim terms "computer," "computing environment," and
"display" (see claim 1) and what they "may be" or "may include" or "may
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contain" (see Spec. ,r,r 46-48) is not conducive to any of these recited terms
likewise being characterized as "a particular tool." Second, regarding the
Federal Circuit's understanding of "a technological solution" as it relates
patent eligibility purposes, it has been made clear that the solution must
focus "on 'an improvement to computer functionality itself, not on economic
or other tasks for which a computer is used in its ordinary capacity." Finjan,
Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018)
(quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016)). Here, as indicated above, Appellants' device is directed to an
interface that can "relabel graphical elements with language elements."
Reply Br. 7. Appellants do not explain how such a substitution of one
element for another on a display is indicative of "an improvement to
computer functionality itself' rather than an "economic or other task[] for
which a computer is used in its ordinary capacity." See supra.
Appellants further address McRo, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299 (Fed. Cir. 2016) stating that in McRo, "the Federal
Circuit found that claims that recited specific rules for animating facial
expressions was not directed to an abstract idea." App. Br. 32; see also
Reply Br. 11-12. Appellants also acknowledge that "[i]n the interview
conducted on June 7, 2017, the Examiner[] attempted to distinguish McRo,
asserting that McRo recited more detailed claims that recited more
significant limitations than 'displaying particular animations in accordance
with a particular academic subject area."' App. Br. 33. There is merit to the
Examiner's assertion in view of the fact that the "rules" Appellants rely on
as being "specific," are, instead, simply recited as "a set of consistent rules."
Appellants do not explain how this generic recitation to a "set of consistent
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rules" can be deemed "specific," and hence warranting a designation of
being patent-eligible.
Appellants also address Trading Techs. Int'!, Inc. v. CQG, Inc., 675 F.
App'x 1001, (Fed. Cir. 2017) and DDR Holdings, LLC v. Hotels.com, LP.,
773 F.3d 1245 (Fed. Cir. 2014). See App. Br. 30-32; Reply Br. 9-11.
Appellants rely on such cases to buttress the argument that "[ c Jlaim 1 is not
directed to an abstract idea because it is directed in part to a
technological solution." App. Br. 30; see also App. Br. 31. For the reasons
already expressed, Appellants' contention is not persuasive and we, instead,
rely on the clear demarcation of a technological solution as set forth in the
more recent case of Finjan. See supra.
Claim 28
Appellants acknowledge that, unlike claim 1 above, claim 28 "does
not explicitly require that the claim be performed without intervention and
instruction by a teacher." App. Br. 35. Appellants also state that "the claim
would still be virtually impossible to perform with a pen and paper because
the claim requires the steps be performed without language interaction."
App. Br. 35. Regardless of whether the claim can be performed with a pen
and paper, the Examiner states, "the proposed solution to the problem of
teaching students without language interaction is not a technological
solution." Ans. 13. As indicated above, Appellants are not persuasive
otherwise.
Claim 61
With respect to claim 61, the Examiner explains that the additionally
cited limitation "is a routine and conventional operation in computer display
and input/output systems." Non-Final Act. 5. Appellants contend that the
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recited "use of a flag provides even more specificity on the rules that control
the animation of the virtual component in Claim 61." App. Br. 36.
However, Appellants do not indicate where claim 61 's recitation to a
component "ha[ ving] a corresponding flag" and particularly, "rules" relating
to such a "flag," is provided or can be found in Appellants' Specification
( other than in claims 61 and claim 64 ). Nevertheless, even presuming the
"rules" now recited in claim 61 are "more specific[]" than those recited in
parent claim 1 as asserted, Appellants do not address the Examiner's
rejection of this additional limitation as being "a routine and conventional
operation" in computer systems. See supra. Further, Appellants do not
address the underlying issue of the additionally claimed subject matter (even
if the rules are more specific) still not applying to a technological solution.
See Ans. 13. Thus, Appellants are not persuasive as to how the inclusion of
the additional limitations of claim 61, which pertain to ( more specific)
"rules" relating to "flags," transforms claim 61 into patent-eligible subject
matter.
Accordingly, and based on the record presented, we are not persuaded
of Examiner error. We sustain the Examiner's rejection of claims 1-7, 9-14,
16-23, 25-38, 40, 41, 46-49, and 52----67 as being directed to patent-ineligible
subject matter.
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DECISION
The Examiner's rejection of claims 1-7, 9-14, 16-23, 25-38, 40, 41,
46-49, and 52-67 as being directed to non-statutory subject matter is
affirmed.
No time period for taking any subsequent action in connection with
this appeal (see 37 C.F.R. § 1.136(a)(l )) may be extended (see 37 C.F.R.
§ 1.136(a)(l )(iv)).
AFFIRMED
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