Microsoft CorporationDownload PDFPatent Trials and Appeals BoardApr 9, 202014146478 - (D) (P.T.A.B. Apr. 9, 2020) 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. 14/146,478 01/02/2014 Hrvoje Benko 328052.02 3952 69316 7590 04/09/2020 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 EXAMINER EGLOFF, PETER RICHARD ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 04/09/2020 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 HRVOJE BENKO and DUSTIN FREEMAN Appeal 2018-005172 Application 14/146,478 Technology Center 3700 Before JEREMY M. PLENZLER, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–8 and 10–22. See Non-Final Act. 1. An oral hearing was held on March 12, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter a New Ground of Rejection pursuant to 37 C.F.R. § 41.50(b). 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. Appeal Br. 3. Appeal 2018-005172 Application 14/146,478 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to “touch/hover input training on a display surface.” Spec. ¶ 3. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for providing hover input training on a display, comprising: receiving, from a hover input detection device, a shape and a size of portions of a hand spaced away from one or more regions of the display as the hand performs a hover input; displaying, on the display, a visualization of the shape and the size of the portions of the hand at a location of the display offset from the hand, the visualization comprising a silhouette having the shape and the size of the portions of the hand; and displaying, on the display, one or more annotations at a location of the display offset from the hand. REJECTION The Examiner rejected claims 1, 3–8, and 10–22 under 35 U.S.C. § 101 as directed to ineligible subject matter. Final Act. 3–4. OPINION Patent-Ineligible Subject Matter Under 35 U.S.C. § 101, an invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Appeal 2018-005172 Application 14/146,478 3 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 Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original). In rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined claims 1, 3–8, and 10–22 are directed to a “method for generating an output at another location (offset location) of a graphical user interface in response to input from a user.” Non-Final Act. 3. The Examiner further determined that the claimed method is “akin to the judicially recognized method of ‘collecting information (hover input), analyzing it (determining a proper visualization and annotation . . .), and displaying certain results of the collection and analysis (displaying the visualization and annotations).’” Id. (citing Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner further analogized the claimed method to the claims determined ineligible in Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F. 3d 1363 (Fed. Cir. 2015). Id. The Appeal 2018-005172 Application 14/146,478 4 Examiner also determined the claims do not include additional elements alone or in combination “to amount to significantly more than the judicial exception because the additional elements . . . amount to no more than: requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities known to the industry” and “do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea.” Id. at 3–4. After Appellant’s briefs were filed, and the Examiner’s Answer mailed, the U.S. Patent and Trademark Office (the “USPTO”) published revised guidance for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised Guidance”). The 2019 Revised Guidance, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Id. at 50.2 Under the Revised Guidance, we first look to whether the claim recites: 2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.” See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”). Accordingly, Appellant’s arguments challenging the sufficiency of the Examiner’s rejection will not be addressed to the extent those arguments are based on currently superseded USPTO guidance. Appeal 2018-005172 Application 14/146,478 5 (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); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim: (1) recites a judicial exception; and (2) does not integrate that exception into a practical application, do we then look to whether the claim; (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 2019 Revised Guidance, 84 Fed. Reg., 54–56. Claims 1, 3, 7, 8, 10–15, 17– 22 Appellant argues claims 1, 3, 7, 8, 10–15, and 17–22 as a group. Appeal Br. 8–24. Pursuant to 37 C.F.R. § 41.37 (c)(1)(iv), we select claim 1 as representative and claims 3, 7, 8, 10–15, and 17–22 stand or fall with claim 1. 2019 Revised Guidance Step 2A, Prong One The first step in the Alice framework, as noted above, is to determine whether the claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in Appeal 2018-005172 Application 14/146,478 6 the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong 1, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. The 2019 Revised Guidance teaches that nontechnical human activity is sufficient to illustrate “the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention.” 2019 Revised Guidance, 84 Fed. Reg. n.13. In this case, claim 1 recites a “method for providing hover input training on a display” and further recites the steps of “receiving” certain information from “a hover input detection device,” “displaying” the information received from the hover input detection device to the user, and further “displaying” annotations at a location on the display. Here, as explained below, it is clear from the Specification (including the claim language) that the claim’s focus is on an abstract idea, and not on any improvement to technology. Appellant’s Specification provides that a user will contact a hover input display with his hand (Spec. ¶ 15, Fig. 1), the display will provide an illustration of the portion of the user’s hand contacting the hover input display offset from the user’s hand (Id. ¶¶ 16–17, Fig. 2), and then display annotations for the user on the display to assist the user in completing a gesture as shown in Figures 3A–5. The Specification further explains that “visualizations of the user’s current hand pose as interpreted by the system (feedback) are combined with annotations including hand pose completion paths for completing the gesture (feedforward).” Id. ¶ 20. In addition, Appeal 2018-005172 Application 14/146,478 7 Appellant’s Specification explains that by “providing a contact-shape touch input training system . . . the transition in user skill level from novice to expert use may be eased while providing system usability to users at all skill levels.” Id. ¶ 14. Within the category of certain methods of organizing human activity, the 2019 Revised Guidance includes “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” Oct. 2019 Update Subject Matter Eligibility, 6 (emphasis added).3 Claim 1 recites a method for training a person in the proper use of a hover input device. It recites receiving input from a hover input detection device about the shape and size of the user’s hand contacting the display, displaying on the display a visualization of the shape and size of the user’s hand offset from the user’s hand, and displaying annotations to the user which are disclosed as teaching the user how to complete input gestures. Therefore, we determine that claim 1 is directed to the abstract idea of teaching how to effectively use a hover input device for which a computer display is merely invoked as a tool. 2019 Revised Guidance Step 2A, Prong Two We now turn to prong two of the first step of the Alice analysis and consider whether the claim integrates this abstract idea into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. 51. In doing so, we consider whether there are any additional elements beyond the abstract idea that, individually or in combination, “integrate the [abstract idea] into a 3 Update to the 2019 Revised Patent Subject Matter Eligibility Guidance issued in October 2019 (available at https://www.uspto.gov/sites/default/ files/documents/peg_oct_2019_update.pdf). Appeal 2018-005172 Application 14/146,478 8 practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit.” See 2019 Revised Guidance, 84 Fed. Reg. 54–55. For this prong, the Federal Circuit instructs, inter alia that “[t]he abstract idea itself cannot supply the inventive concept ‘no matter how groundbreaking the advance.’” Trading Techs. Int’l, Inc, v, IBG LLC, 921 F.3d 1093 (Fed. Cir. 2019) (citations omitted). Appellant argues that the method of claim 1 could not be performed with just any computer data . . . the collected data is not generic, and does not refer to any hand, but reflects the shape and the size portions of a specific hand that is currently spaced away from a display. The displayed visualization is not any generic visualization, but rather specifically represents the shape and size of the detected portions of the hand, at a position on the display that is offset from the hand. The annotation is similarly offset from the hand. Appeal Br. 13. We appreciate Appellant’s argument that the data displayed is not generic data but Appellant fails to persuasively explain how the display limitation integrates the abstract idea into a practical application either alone or as part of an ordered combination of steps. Under Appellant’s theory, any method of training on any particular device would integrate the abstract idea of training into a practical application. In this case, training could be performed by a person taking a photograph of the user’s hand on the hover input device, showing the photograph to the user, and instructing the user how to complete a gesture. The mere fact that the abstract idea of training a user of a hover input device is improved is not sufficient to supply an inventive concept that integrates the abstract idea into a practical application. Appellant also contends that claim 1 does not recite an abstract idea but is “directed to an improvement in computer functionality.” Appeal Br. 10. Appeal 2018-005172 Application 14/146,478 9 According to Appellant, hover inputs for a computing device “can provide advantages as compared to traditional input methods” but when “the user does not make use of such hover inputs (e.g., due to ignorance of how hover inputs are performed), the potential efficiency of the computing device is reduced.” Id. In support of this contention, Appellant directs us to paragraph 13 of the Specification which we note provides, in part, that “[m]ulti-touch computing system input may be difficult for a user to learn and may prevent the user from effectively using such a system.” Id. (quoting Spec. ¶ 13). Although Appellant argues that claim 1 improves computer functionality (Appeal Br. 10), this argument is belied by the Federal Circuit’s decision in Trading Techs. The claims in Trading Techs included steps of receiving and displaying information. Id. at 1092. Although the claims at issue in Trading Techs. recited “a purportedly new arrangement of generic information that assists traders in processing information more quickly,” the Federal Circuit held that such an improvement did not “improve the functioning of the computer, make it operate more efficiently, or solve any technological problem.” Id. at 1092– 93. The method of claim 1 likewise may improve a user’s ability to effectively use a hover input device but the claimed method does not improve the functioning of the hover input device, a computer, or solve any technological problem. Consequently, we determine that the method of claim 1 does not integrate the abstract idea into a practical application. 2019 Revised Guidance Step 2B Finally, we evaluate whether any claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply append [] well- Appeal 2018-005172 Application 14/146,478 10 understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” See 2019 Revised Guidance, 84 Fed. Reg. 56. As noted above, the Examiner determined the claims do not include any such additional elements. See Final Act. 3–4. Appellant contends that a hover input detection device “is a specialized hardware component” and “is not a generic piece of computer hardware.” Appeal Br. 15. Appellant does not direct us to any portion of the Specification or other evidence to support this contention. Appellant’s Specification discloses that the device “may be any suitable touch display, nonlimiting examples of which include touch sensitive liquid crystal displays, touch sensitive organic light emitting diode (OLED) displays, and rear projection displays with infrared, vision based, touch detection cameras.” Spec. ¶ 56. Other disclosed elements are a computing device 700, a touch input trainer 706, a logic subsystem 708, and data holding subsystem 710. Id. ¶¶ 56–59, Fig. 7. All of these elements are disclosed as generic components. Appellant’s unsupported attorney argument to the contrary does not persuade us of Examiner error in connection with the Examiner’s findings relevant to Step 2B. Further, Appellant has not persuasively explained why the claim elements of receiving an input, displaying a visualization of the user’s hand, and displaying an annotation, considered individually or as an ordered combination are not routine and conventional activities. Conclusion-Claim 1 For all of the foregoing reasons, we sustain the rejection of claim 1 under 35 U.S.C. § 101. Claims 3, 7, 8, 10–15, and 17–22 fall with claim 1. However, because our analysis differs from that of the Examiner, we Appeal 2018-005172 Application 14/146,478 11 designate our affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to provide Appellant with a fair opportunity to respond. Claims 4–6 and 16 Claims 4–6 depend from claim 1. Appeal Br. 20–21 (Claims App.). Independent claim 16 is similar to claim 1 with the additional limitation of simultaneously displaying two or more different annotations. Id. at 22–23. Appellant argues that the limitations in these claims, in addition to those in claim 1, amount to significantly more than the abstract idea identified by the Examiner. Id. at 14. We have reviewed these additional limitations and are not persuaded that Appellant’s argument regarding these limitations alters our conclusion for the reasons stated above. Therefore, we sustain the rejection of claims 4–6 and 16 but designate our affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to provide Appellant with a fair opportunity to respond. CONCLUSION The Examiner’s rejection is sustained. More specifically, DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 3–8, 10–22 101 1, 3–8, 10–22 1, 3–8, 10–22 Overall Outcome 1, 3–8, 10–22 1, 3–8, 10–22 Appeal 2018-005172 Application 14/146,478 12 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED; 37 C.F.R. 41.50(B) Copy with citationCopy as parenthetical citation