Forbes, Scott C. et al.

Patent Trials and Appeals Board

Sep 30, 2019

11771483 - (D) (P.T.A.B. Sep. 30, 2019)

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.
11/771,483 06/29/2007 Scott C. Forbes 319457-US-NP 8036
69316 7590 09/30/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
POUNCIL, DARNELL A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SCOTT C. FORBES, JERALD J. GNUSCHKE,
TIM M. MOORE, and DAWSON YEE
____________________

Appeal 2018-007459
Application 11/771,483
Technology Center 3600
____________________

Before STACY G. WHITE, SCOTT B. HOWARD, and
STEPHEN E. BELISLE, Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–13, 15, and 25–29, which constitute all of the claims pending in
this application. Claims 14 and 16–24 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 Microsoft
Technology Licensing, LLC. Br. 3.
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THE INVENTION
The disclosed and claimed invention is directed to “[t]echniques for
providing third party incentivized communications sessions.” Abstract.
More specifically, the invention is directed to sampling an audio
conversation “for audio information such as a word, phrase, utterance, or
phoneme that may be associated with an advertisement in a database.” Id.
Claim 1, reproduced below with relevant limitations emphasized, is
illustrative of the claimed subject matter:
1. A computer-implemented method for processing audio
data, the computer-implemented method comprising:
receiving, by a recognition module in a server, an audio
conversation from a client device;
converting, by the recognition module, the audio
conversation into text that is representative of the audio
conversation;
sampling, by the recognition module, the text for a word;
buffering, by the recognition module, at least a portion of
the text during the sampling;
searching, by a content module in the server, in a
database for a piece of content that is associated with the word,
the searching including a backward sampling, wherein the
backward sampling comprises:
identifying the word in the portion of the text, the
word occurring at a first frequency that is less than a
second frequency associated with a plurality of other
words in conversations; and
at least partly in response to identifying the word,
looking for a relevant word in a segment of the portion of
the text, wherein the segment of the portion precedes the
word, and wherein detection of the relevant word in
combination with the word triggers provisioning of the
piece of content; and
sending, by the content module, the provisioned piece of
content to the client device.

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REJECTION
Claims 1–13, 15, and 25–292 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are persuaded by Appellant’s arguments that, based on the current record,
the Examiner erred in rejecting the claims.
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. Id. 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

2 The Final Action identifies claims 1, 2, 4, 6–11, and 13–25 as rejected.
See Final Act. 2. This appears to be a typographical error.
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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, 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, 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 176; 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. (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
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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
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 requir[ing] 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
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). 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 methods of
organizing human activity such as a fundamental economic
practice, or mental processes) [(Step 2A, Prong 1)]; and

(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
[(Step 2A, Prong 2)].
See 2019 Revised Guidance, 84 Fed. Reg. at 52, 54–55. If a claim
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application, we then look to whether the claim:
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(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 id. at 56. This is sometimes referred to as Step 2B.
2019 Revised Guidance, Step 2B
We have reviewed Appellant’s claims and, in light of current
precedent and the 2019 Revised Guidance, we determine Appellant has
raised a dispositive issue with respect to the Examiner’s determinations
under Step 2B. Accordingly, we need not present a detailed analysis under
Step 2A and, instead, need only address whether the Examiner has provided
a proper rejection under Step 2B.
The 2019 Revised Guidance states that if an analysis is needed for
Step 2B, the “administrative patent judge will proceed in accordance with
existing USPTO guidance as modified in April 2018.3” Id. at 51 (footnote
renumbered); see also id. at 56.
The Berkheimer Memorandum provides specific requirements to
support any determination that claim elements (or a combination of
elements) are well-understood, routine, or conventional. Pursuant to the
Berkheimer Memorandum, “an additional element (or combination of

3 USPTO Memorandum of April 19, 2018, “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)’’ (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF [hereinafter “USPTO Berkheimer Memorandum”].
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elements) is not well-understood, routine or conventional unless the
examiner finds, and expressly supports a rejection in writing with, one or
more of the following:”
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s) . . . .
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s) . . . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element(s) . . . .
Berkheimer Memorandum 3–4.
Appellant argues that each of the independent claims recites an
additional limitation beyond the abstract idea which “adds a specific
limitation other than what is well-understood routine, conventional activity
in the field or unconventional steps that confine the claim to a particular
useful application.” Br. 25 (citation omitted). Specifically, Appellant
argues each of the independent claims recites limitations which require
identifying a word and then identifying an additional word in the segment of
text that precedes the word. Br. 25–28 (citing Spec. ¶ 48). The
Specification describes this as “backward sampling.” See Spec. ¶ 48.
The Examiner determines “that the Supreme Court and Federal
Circuit Court have recognized that receiving, processing and storing data,
matching information (e.g. comparison of data), and receiving or
transmitting data over a network, e.g. using the Internet to gather data are
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computer functions that are well understood, routine, and conventional
functions . . . .” Final Act. 3–4; see also Ans. 4–5. More specifically, the
Examiner determines that the backward sampling recited in the claims “is
what humans routinely do in the mind to determine the context of words.”
Ans. 5–6.
The Examiner’s rejection and Answer4 have not provided a
sufficiently persuasive citation as required by the Berkheimer Memorandum
to support the Examiner’s determination that the additional elements are
well-understood, routine, and conventional. First, the Examiner determines
that the backward sampling recited in the claims “is what humans routinely
do in the mind to determine the context of words.” Ans. 5–6. However, the
Examiner does not cite an express statement in the specification, a court
decision, or a publication supporting its determination. Such an unsupported
determination is not sufficient under the Berkheimer Memorandum or the
2019 Revised Guidance.
Second, although not focused on backwards sampling, the Examiner
cites two cases—Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350
(Fed. Cir. 2016) and Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363 (Fed. Cir. 2015)—for the proposition that “using the Internet
to gather data are computer functions that are well understood, routine, and
conventional when they are claimed in a merely generic manner.” Ans. 5.
However, those cases are not sufficiently persuasive to demonstrate that the
specific type of data analysis recited in the claims—backwards sampling—is
well understood, routine, or conventional.

4 We note that the Answer was mailed on May 14, 2018, nearly a month
after the issuance of the Berkheimer Memorandum.
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In Electric Power, “a large portion of the lengthy claims is devoted to
enumerating types of information and information sources available within
the power-grid environment.” 830 F.3d at 1355. The Federal Circuit held
because the claims “do not even require a new source or type of information,
or new techniques for analyzing it,” the claims “do not require an arguably
inventive set of components or methods.” Id. Because the claims used
conventional data analysis and conventional components, the Federal Circuit
held that the claims were not directed to patentable subject matter. Id. at
1354. Similarly, in Intellectual Ventures the Federal Circuit determined the
claims did not contain an inventive concept because the claims used generic
computer components to perform generic computer tasks. 792 F.3d at 1368.
We are not persuaded that Electric Power Group and Intellectual
Ventures are sufficiently analogous to the instant claims. Unlike the claims
in those cases, the pending claims do not recite to generic data analysis
described at a high level of generality. Instead, the claims recite a specific
type of data analysis, backward sampling, which, according to the
Specification, can be used to determine the context of a word. Neither of the
cases cited by the Examiner involve that such specific types of data analysis.
Therefore, the Examiner has not provided sufficient persuasive
evidence that Appellant’s claims recite additional elements that are well-
understood, routine, and conventional with respect to Step 2B of the
Alice/Mayo framework in the 2019 Revised Guidance. Accordingly, we are
constrained by the record to reverse the Examiner’s rejection of claims 1–13,
15, and 25–28.

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CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–13, 15, and 25–28 § 101 1–13, 15, and
25–28

DECISION
For the above reasons, we reverse the Examiner’s decisions rejecting
claims 1–13, 15, and 25–28.

REVERSED