Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Jun 8, 2021

2020000382 (P.T.A.B. Jun. 8, 2021)

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.
15/830,767 12/04/2017 Jean-Philippe Robichaud MST-0177-01-
US-CON-01/355
1062
141674 7590 06/08/2021
Faegre Drinker Biddle & Reath LLP (Microsoft)
1500 K Street, N.W.
Suite 1100
Washington, DC 20005
EXAMINER
ZHU, RICHARD Z
ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
06/08/2021 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):
patentdocketingdvr@faegredrinker.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JEAN-PHILIPPE ROBICHAUD and
RUHI SARIKAYA1
________________

Appeal 2020-000382
Application 15/830,767
Technology Center 2600
________________

Before BRADLEY W. BAUMEISTER, JAMES B. ARPIN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 21–40, which constitute all claims pending in this
application. Appeal Br. 11.
We reverse.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claim 31, reinstating the withdrawn rejection under
35 U.S.C. § 101, as directed to an abstract idea, without reciting significantly
more.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Microsoft Technology Licensing, LLC as the real party in interest.
Appeal Brief, 3, filed April 29, 2019 (“Appeal Br.”).
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
Methods and systems are provided for discriminating
ambiguous expressions to enhance user experience. For example,
a natural language expression may be received by a speech
recognition component. The natural language expression may
include at least one of words, terms, and phrases of text. A dialog
hypothesis set from the natural language expression may be
created by using contextual information. In some cases, the
dialog hypothesis set has at least two dialog hypotheses. A
plurality of dialog responses may be generated for the dialog
hypothesis set. The dialog hypothesis set may be ranked based
on an analysis of the plurality of the dialog responses. An action
may be performed based on ranking the dialog hypothesis set.
Spec., Abstr.
Independent claim 31 illustrates the subject matter. Paragraph
designators are added for clarity, and emphasis is added to indicate disputed
claim language:
31. A method comprising:
[(a)] receiving a natural language expression, wherein the
natural language expression includes at least one of words, terms,
and phrases of text;
[(b)] generating, by executing a machine learning technique, a
first dialog hypothesis and a second dialog hypothesis from the
natural language expression by using contextual information,
wherein the first dialog hypothesis and the second dialog
hypothesis include different hypotheses of actions to perform
based on the natural language expression;
[(c)] generating a plurality of dialog responses for the first
dialog hypothesis and the second dialog hypothesis;
[(d)] extracting features from the first dialog hypothesis and
features from the second dialog hypothesis;
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[(e)] ranking the first dialog hypothesis and the second dialog
hypothesis based on an analysis of the plurality of the dialog
responses; and
[(f)] based on the ranking of the first dialog hypothesis and the
second dialog hypothesis, executing an action to provide a
response to the natural language expression.

STATEMENT OF THE REJECTIONS2
Claims 31–36 stand rejected under 35 U.S.C. § 102(a)(2) as
anticipated by Haggar (US 2015/0026163 A1; published Jan. 22, 2015).
Final Action 13–16, mailed Nov. 1, 2018 (“Final Act.”).
Claims 21–30 and 37–40 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combined teachings of Haggar and Suleman
(US 2015/0039292 A1; published Feb. 5, 2015). Final Act. 16–26.

STANDARD OF REVIEW
We have jurisdiction under 35 U.S.C. § 6(b). The Board conducts a
limited de novo review of the appealed rejections for error based upon the
issues identified by Appellant, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).

2 The Examiner rejected claims 21–40 under 35 U.S.C. § 101 as directed to
an abstract idea, without significantly more. Non-Final Action 4–7, mailed
April 5, 2018 (“Non-Final Act.”). However, the Examiner withdrew that
rejection in the Examiner’s Answer, 22–27, mailed August 22, 2019
(“Ans.”).
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DETERMINATIONS AND CONTENTIONS
The Examiner finds that Haggar discloses, among other limitations,
receiving a natural language expression, and generating a first dialog
hypothesis and a second dialog hypothesis from the natural language
expression, wherein the first dialog hypothesis and the second dialog
hypothesis include different hypotheses of actions to perform based on the
natural language expression. Final Act. 13–14 (citing Haggar ¶¶ 62–63, 71,
81–82, 86). The Examiner further finds that Haggar discloses generating a
plurality of dialog responses for the first dialog hypothesis and the second
dialog hypothesis and ranking the first dialog hypothesis and the second
dialog hypothesis based on an analysis of the plurality of the dialog
responses. Final Act 14 (citing Haggar ¶¶ 64, 73–75, 87).
Appellant asserts, inter alia, that Haggar does not disclose ranking the
first dialog hypothesis and the second dialog hypothesis. Appeal Br. 12.
According to Appellant, Haggar is directed to ranking content or answer
sources, rather than a dialog hypothesis because in Haggar, the term
“hypothesis” refers to a candidate answer, whereas in the present
application, the dialog hypothesis is a predicted question, and not the
answer. Id.
The Examiner subsequently clarifies that Haggar teaches ranking the
first and second dialog hypothesis because Haggar ranks one or more queries
based on the quality and accuracy of the results generated from application
of the queries. Ans. 3–7 (citing Haggar ¶¶ 3, 38, 62–65, 68, 71, 75, 78, 86).
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ANALYSIS3
Claim 31 recites receiving and generating a hypothesis that is directed
to ambiguities in the query and not the answer/results, and then ranking the
queries. The Examiner relies upon the following disclosure from Haggar:
FIG. 6 is a flowchart outlining an example operation of an
improved QA system with regard to rating candidate answer
sources in accordance with one illustrative embodiment. As
shown in FIG. 6, the operation starts by receiving an input
question (step 610). The input question is parsed and analyzed to
extract features from the input question (step 620). The extracted
features are used to identify the domain of the input question and
to generate one or more queries (step 630). One or more ranked
listings of candidate answer sources for the identified domain of
the input question are retrieved (step 640) and one or more
predetermined criteria are applied to the one or more ranked
listings to identify a subset of candidate answer sources to use
for identifying an answer to the input question (step 650). The
one or more predetermined criteria may be default criteria stored
in the QA system, user defined criteria such as may be specified
in a user profile, or the like.
Haggar ¶ 86, cited in Ans. 4.
This paragraph, however, does not teach or suggest any ambiguity
with regard to the initial query or question received from the natural
language expression, as claimed. The paragraph only teaches that an
ambiguity exists with regards to the candidate answers. Moreover, the other
paragraphs relied upon by the Examiner, likewise, do not teach this claim
limitation.

3 We only address the presented question, namely, whether Haggar discloses
ambiguities in a query. We do not consider whether Haggar’s disclosure of
resolving ambiguities in the response teaches or suggests resolving
ambiguities in a query. See Frye, 94 USPQ2d at 1075.
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We agree with Appellant, then, that the Examiner has not explained
why it would have been reasonable to interpret the hypothesis relating to an
ambiguity in the query results, as described by Haggar, to disclose a
hypothesis in an ambiguity in the request, as recited in independent claim 31
and as described in Appellant’s Specification. See Spec. ¶¶ 17, 45.
Accordingly, the Examiner does not show that Haggar discloses ranking the
first dialog hypothesis and the second dialog hypothesis based on an analysis
of the plurality of the dialog responses, as recited in claim 31.
Therefore, we reverse the anticipation rejection of independent
claim 31 and of claims 32–36, which depend from claim 31. With respect to
the obviousness rejection of independent claims 21 and 37, the Examiner
does not rely on the teachings of Suleman to cure the deficiency of the
anticipation rejection noted above. Final Act. 16–26. Accordingly, we also
reverse the obviousness rejection of claims 21 and 37 and of claims 22–30
and of claims 38–40, which depend from these independent claims,
respectively.

NEW GROUND OF REJECTION
Background and Summary
The Examiner previously rejected claims 21–40 under 35 U.S.C.
§ 101 as directed to an abstract idea, without reciting significantly more.
Final Act. 11–12. More specifically, the Examiner characterized the abstract
idea as combinations of steps entailing collecting information, analyzing
information, recognizing information, and presenting results of the analysis.
Final Act. 4–8. The Examiner further determined that the claims’ additional
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elements beyond the abstract ideas were well-understood, routine, and
conventional. Id. at 8–9.
The Examiner subsequently withdrew the patent-eligibility rejection
in the Answer, finding,

While “collecting data” and “recognizing / analyzing data”
pertain to methods of organizing human activity,[] it is not
enumerated under bracket (b) Certain methods of organizing
human activity in the 2019 Revised Patent Subject Matter
Eligibility Guidance because those not enumerated have been
described both as abstract and not abstract in different CAFC
cases.[]
[Because] the claim does not recite a judicial exception
within the enumerated groupings of abstract ideas, then claims
21–40 are eligible at Prong One of revised Step 2A and this
concludes the eligibility analysis.[]
Ans. 27; see generally id. at 22–27.
We disagree with the Examiner’s characterization of collecting data,
analyzing data, and displaying results as constituting a method of organizing
human activity. But we do agree with the Examiner’s initial position,
ultimately determining that the claims are directed to an abstract idea,
without reciting significantly more. More specifically, we determine that
analyzing data, as claimed, constitutes a mental process that can be
performed in the human mind or with the aid of paper and pencil. We further
determine that the additionally recited steps of collecting data and displaying
the results constitute insignificant extra-solution activity.
For the reasons set forth in more detail below, then, we exercise our
authority under 37 C.F.R. § 41.50(b), and we enter a new ground of rejection
for claim 31 under 35 U.S.C. § 101 as directed to an abstract idea, without
reciting significantly more.
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Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. 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. 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 Court’s two-part framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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.”).
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, 67 (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
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (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
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 187; 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 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. at 191 (citing Benson
and Flook); see also, 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 part
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 (internal 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. (alterations in original) (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.
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B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1. The Manual of Patent Examining Procedure
(“MPEP”) now incorporates this revised guidance and subsequent updates at
Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).4
Under MPEP § 2106, we first look to whether the claim recites the
following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and

4 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
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(2) additional elements that integrate the judicial exception into a
practical application.5
MPEP §§ 2106.04(a), (d).
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, [and] conventional activity” in the field; 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.
MPEP § 2106.05(d).
Analysis
STEP 1:
The claimed subject matter falls within one of the four statutory
categories of patentable subject matter identified by 35 U.S.C. § 101:
process, machine, manufacture, or composition of matter. Accordingly, we
turn to step 2A of the 2019 Guidance.

5 “Examiners evaluate integration into a practical application by
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s), and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application . . . .” MPEP
§ 2106.04(d)II.
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STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we look to whether the
claim recites any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activities such as a fundamental economic practice, or mental processes).
MPEP § 2106.04(a).
Limitations (b) through (e) of claim 31 read, in part, as follows:
[(b)] generating . . . a first dialog hypothesis and a second dialog
hypothesis from the natural language expression by using
contextual information, wherein the first dialog hypothesis and
the second dialog hypothesis include different hypotheses of
actions to perform based on the natural language expression;
[(c)] generating a plurality of dialog responses for the first
dialog hypothesis and the second dialog hypothesis;
[(d)] extracting features from the first dialog hypothesis and
features from the second dialog hypothesis; [and]
[(e)] ranking the first dialog hypothesis and the second dialog
hypothesis based on an analysis of the plurality of the dialog
responses.
Generating hypotheses about the meaning of an ambiguous
communication, as recited in step (b), constitutes a mental observation,
evaluation, judgment, or opinion that can be performed in the human mind.
Humans have long striven to decipher ambiguous statements. Similarly,
generating dialog responses, as recited in step (c), also constitutes such a
mental process. Likewise, extracting features of the hypotheses (step (d)), as
well as ranking the hypotheses based on the dialog responses (step (e)), also
constitutes mental processes that can be performed in the human mind.
The 2019 Guidance expressly recognizes such mental processes as
constituting patent-ineligible abstract ideas. 2019 Guidance, 84 Fed. Reg.
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at 52; see also October 2019 Guidance Update at 7–8 (“Examples of claims
that recite mental processes include[] a claim to ‘collecting information,
analyzing it, and displaying certain results of the collection and analysis,’
where the data analysis steps are recited at a high level of generality such
that they could practically be performed in the human mind.”) (citing
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016));
see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318, (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.’’).
Accordingly, at least each of limitations (b) through (e) recites an
abstract idea under step 2A, prong 1, of the 2019 Guidance. See
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
(“Adding one abstract idea . . . to another abstract idea . . . does not render
the claim non-abstract.”).
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 31 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies
considerations indicative of whether an additional element or combination of
elements integrate the judicial exception into a practical application, such as
an additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at 55;
MPEP § 2106.05(a).
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Limitation (b) additionally requires that the mental process of
generating plural dialog hypotheses be performed “by executing a machine
learning technique.” This language merely requires execution of an
algorithm that can be performed by a generic computer component and
provides no detail regarding the operation of that algorithm. As such, the
claim requirement amounts to mere instructions to implement the abstract
idea on a computer, and, therefore, is not sufficient to make the claim patent
eligible. See Alice, 573 U.S. at 226 (determining that the claim limitations
“data processing system,” “communications controller,” and “data storage
unit” were generic computer components that amounted to mere instructions
to implement the abstract idea on a computer); October 2019 Guidance
Update at 11–12 (recitation of generic computer limitations for
implementing the abstract idea “would not be sufficient to demonstrate
integration of a judicial exception into a practical application”). Such a
generic recitation of “machine learning” is insufficient to show a practical
application of the recited abstract idea.
Limitation (a) of claim 31 additionally recites, “receiving a natural
language expression, wherein the natural language expression includes at
least one of words, terms, and phrases of text.” Receiving a natural language
expression, presumably by a computer, merely constitutes insignificant pre-
solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
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Limitation (f) additionally recites, “based on the ranking of the first
dialog hypothesis and the second dialog hypothesis, executing an action to
provide a response to the natural language expression.” Similar to
limitation (a), claim 31’s step (f) does not add any meaningful limitations to
the abstract idea because it merely constitutes the insignificant post-solution
activity of displaying data. Spec. ¶¶ 48, 57; see, e.g., Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016) (holding that
printing or downloading generated menus constituted insignificant extra-
solution activity); Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378,
1384 (Fed. Cir. 2019) (“focused on providing information . . . in a way that
helps [a human] process information more quickly,” or analogously, with
less ambiguity, does not recite some manner of “improving computers or
technology”).
Prior to the Examiner’s withdrawal of the patent-eligibility rejection,
Appellant argued that any such abstract idea present in the claims is
integrated into a practical application. Appeal Br. 25. According to
Appellant, “the claimed technology looks to resolve problems that would not
exist but for computing technology. In particular, the claimed invention solves
problems related to natural language interfaces and processing natural
language.” Id.
This argument is unpersuasive because, although the learning is
performed with a computer, that does not necessarily mean that the
invention improves technology. And on this record, the claimed invention is
directed to the allegedly improved process for interpreting natural language
expressions. That is, the invention pertains to improvements in the recited
abstract ideas—not in the computer that is used to perform the abstract idea.
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See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”);
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“[A] claim for a new abstract idea is still an abstract idea.”)
(emphasis omitted); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract
application realm.”).
For these reasons, Appellant does not persuade us that claim 31 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor does Appellant
persuasively demonstrate that claim 31 is directed to a particular machine or
transformation, or that claim 31 adds any other meaningful limitations for
the purposes of the analysis under Section 101. MPEP §§ 2106.05(b), (c),
(e). Accordingly, Appellant does not persuade us that claim 31 integrates the
recited abstract ideas into a practical application within the meaning of the
2019 Guidance. See 2019 Guidance, 84 Fed. Reg. at 52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 31 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 2019 Guidance,
84 Fed. Reg. at 56; MPEP § 2106.05(d).
Appellant’s Specification, by describing computer-related components
at a high level, without details of structure or implementation, indicates that
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the recited additional element—the computer system that performs the
recited machine learning technique—is well understood, routine and
conventional. For example, Appellant’s Specification explains that the
present dynamic system 100 may include a speech recognition component
110, a language understanding component 120, a dialog component 130, and
a backend engine 140. Spec. ¶ 21. Appellant’s Specification further
acknowledges, “the speech recognition component 110 may include standard
speech recognition techniques known to those skilled in the art.” Id.
Appellant’s Specification acknowledges, “the language understanding
component 120 may include standard spoken language understanding
models.” Id. ¶ 22. Appellant’s Specification states, “the backend engine 140
may include any backend engine suitable to receive and process text and/or
keyword natural language expressions/queries.” Id. ¶ 30.
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered combination
adds any significance beyond the additional elements, as considered
individually. Rather, Appellant’s Specification indicates that the methods are
directed to an abstract idea that is made more efficient with generic
computer components—“discriminating ambiguous expressions to enhance
user experience.” Spec. ¶ 3.
For these reasons, we determine that claim 31 does not recite
additional elements that, either individually or as an ordered combination,
amount to significantly more than the identified abstract idea, within the
meaning of the 2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55;
MPEP § 2106.05(d).
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Accordingly, we reject claim 31 under 35 U.S.C. § 101 as directed to
an abstract idea, without reciting significantly more. Because the Board is an
appellate body, we leave it to the Examiner to consider the patent eligibility
of claims 21–30 and 32–40 in light of our analysis of claim 31. We remind
the Examiner, though, that even if a dependent claim may recite an abstract
idea with more specificity, the specificity of an abstract idea, alone, is not a
basis for finding that a claim recites an improvement to the function of a
computer or to any other technology or technical field. See, e.g., Flook, 437
U.S. at 593 (“respondent incorrectly assumes that if a process application
implements a principle in some specific fashion, it automatically falls within
the patentable subject matter of § 101.”).

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed New
Ground
31–36 102(a)(2) Haggar 31–36
21–30,
37–40
103(a) Haggar, Suleman 21–30,
37–40

31 101 Patent eligibility 31
Overall
Outcome
21–30,
32–40
31

FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Rule 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.”
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Rule 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. . . .

REVERSED;
37 C.F.R. § 41.50(b)