Ex parte McNeil

• Docket Number: Appeal 2023-000011,Application 16/589,314,Technology Center 2100
• Decision Date: 19 January 2024
• Parties: Ex parte KRISTIN E. MCNEIL, ROBERT C. SIZEMORE, DAVID B. WERTS, and STERLING R. SMITH
• Court: Patent Trial and Appeal Board

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Ex parte KRISTIN E. MCNEIL, ROBERT C. SIZEMORE, DAVID B. WERTS, and STERLING R. SMITH

Appeal 2023-000011

Application 16/589,314

Technology Center 2100

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 19, 2024

FILING DATE: 10/01/2019

Before JEREMY J. CURCURI, GREGG I. ANDERSON, and CHRISTA P. ZADO, Administrative Patent Judges.

DECISION ON APPEAL

CURCURI, ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant^[1] appeals from the Examiner's decision to reject claims 1, 4-11, and 14-25. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

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CLAIMED SUBJECT MATTER

The claims are directed to "[b]ias identification in cognitive computing systems." Spec, Title. Claim 1, reproduced below, is illustrative of the claimed subject matter:

1. A method, in a data processing system comprising a processor and memory, the memory comprising instructions executed by the processor to cause the processor to implement a bias identification engine that identifies bias in the operation of a trained cognitive computing system, the method comprising

configuring a bias risk annotator of the bias identification engine to identify a plurality of bias triggers in inputs to the trained cognitive computing system and outputs of the trained cognitive computing system based on a bias risk trigger data structure that specifies terms or phrases that are associated with a bias, wherein the trained cognitive computing system is an artificial intelligence computing system trained by a machine learning computer operation to generate the outputs based on the inputs to the trained cognitive computing system

executing the trained cognitive computing system on an annotated input to the trained cognitive computing system and generating an annotated output, by the trained cognitive computing system, based on a first corpus of electronic content

processing, by the bias risk annotator, the annotated input and the annotated output to determine whether the annotated input or annotated output comprises a portion of content that contains a bias trigger in the plurality of bias triggers;

in response to at least one of the annotated input or annotated output comprising a portion of content containing a bias trigger in the plurality of bias triggers, transmitting, by a bias notification engine of the bias identification engine, a notification to an administrator computing device, wherein the notification specifies the presence of bias in the operation of the trained cognitive computing system; and

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in response to at least one of the annotated input or the annotated output comprising a portion of content containing a bias trigger:

testing, by a bias source identification engine of the bias identification engine, the trained cognitive computing system using a set of bias test questions and a bias test corpus having a predetermined balance of biased results and unbiased results, to determine whether the trained cognitive computing system returns biased results from the bias test corpus at a higher amount than the trained cognitive computing system returns unbiased results from the bias test corpus;

determining, by the bias source identification engine, based on results of the testing of the trained cognitive computing system, whether a source of the bias in the annotated output generated by the trained cognitive computing system is training of the trained cognitive computing system or bias present in the first corpus used by the trained cognitive computing system to generate the annotated output, based on results of the testing; and

generating, by the bias source identification engine, an output indicating the source of the bias.

REFERENCES

The prior art relied upon by the Examiner is:

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Name	Reference	Date
Fan	US 2015/0310116 A1	Oct. 29, 2015
Baughman	US 2016/0239740 A1	Aug. 18, 2016
Silberman	US 2017/0330058 A1	Nov. 16, 2017
Gaur	US 2018/0341637 A1	Nov. 29, 2018
Weider	US 2020/0380398 A1	Dec. 3, 2020
Nourian	US 2021/0049503 A1	Feb. 18, 2021
DeCook, 6.1 Statistically Significant, 2009, pages 1-14, Pearson Education, Inc.
Herzig, An Annotation Scheme for Automated Bias Detection in Wikipedia, Proceedings of the Fifth Law Workshop (LAW V), Portland, Oregon, June 23-24, 2011, pages 47-55, Association of Computational Linguistics.
Bolukbasi, Man is to Computer Programmer as Woman is to Homemaker? Debiasing Word Embeddings. July 21. 2016. pages 1-25.

REJECTIONS

Claims 1, 4-11, and 14-25 are rejected under 35 U.S.C. § 112(b) as indefinite. Final Act. 6-8.

Claims 1, 4-11, and 14-25 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Final Act. 8-17; see also Final Act. 17-18 (providing additional remarks with respect to 35 U.S.C. § 101).

Claims 1 and 4 are rejected under 35 U.S.C. § 103 as obvious over Weider, Baughman, and Gaur. Final Act. 19-31; see also Final Act. 18-19 (discussing claim interpretation).

Claims 5 and 6 are rejected under 35 U.S.C. § 103 as obvious over Weider, Baughman, Gaur, and DeCook. Final Act. 31-34.

Claim 7 is rejected under 35 U.S.C. § 103 as obvious over Weider, Baughman, Gaur, and Bolukbasi. Final Act. 35-41.

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Claims 8, 9, and 24 are rejected under 35 U.S.C. § 103 as obvious over Weider, Baughman, Gaur, and Nourian. Final Act. 41-47.

Claim 10 is rejected under 35 U.S.C. § 103 as obvious over Weider, Baughman, Gaur, and Silberman. Final Act. 48-51.

Claims 22 and 23 are rejected under 35 U.S.C. § 103 as obvious over Weider, Baughman, Gaur, and Fan. Final Act. 51-57.

Claim 25 is rejected under 35 U.S.C. § 103 as obvious over Weider, Baughman, Gaur, DeCook, and Herzig. Final Act. 57-59.

PRINCIPLES OF LAW

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. CLSBanklnt'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. Id. at 217-218 (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 219-220; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-595 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-268 (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 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 176; see also id. at 192 ("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. (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.").

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

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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 (quotation marks 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. (quoting Mayo, 566 U.S. at 77). "[M]erely requiring] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention." Id.

The PTO recently published revised guidance on the application of 35 U.S.C. § 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance ("Memorandum"). Under that guidance, we first look to whether the claim recites:

(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain

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