Anatoly Starostin et al.

Patent Trials and Appeals Board

Mar 2, 2020

14974578 - (D) (P.T.A.B. Mar. 2, 2020)

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.
14/974,578 12/18/2015 Anatoly Starostin ABBYY-0286-
US 29502.L0021
8312
13943 7590 03/02/2020
LOWENSTEIN SANDLER LLP / ABBYY
Patent Docket Administrator
One Lowenstein Drive
Roseland, NJ 07068
EXAMINER
YANG, QIAN
ART UNIT PAPER NUMBER
2668
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
patent@abbyy.ru
patents@lowenstein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANATOLY STAROSTIN, TATIANA DANIELYAN, and
IVAN SMUROV
Appeal 2018-002282
Application 14/974,578
Technology Center 2600
Before CARL L. SILVERMAN, SCOTT E. BAIN, and
MICHAEL T. CYGAN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–19, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Abbyy Production
LLC. Appeal Br. 3.
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BACKGROUND
The Claimed Invention
Appellant’s claimed invention relates to “methods for natural
language processing,” and specifically, to creating “ontologies” by analyzing
natural language texts. Spec. ¶¶ 1, 26. An “ontology,” according to the
Specification, is a “model representing objects pertaining to a certain branch
of knowledge (subject area) and relationships among such objects.” Id. ¶ 27.
Claims 1, 9, and 16 are independent. Claim 1 is illustrative of the invention
and the subject matter of the appeal, and reads as follows (with disputed
limitation emphasized):
1. A method, comprising:
receiving, by a computing device, identifiers of a first
plurality of word groups within a natural language text, each
word group comprising one or more natural language words;
associating an object represented by each word group
with a concept of an ontology;
identifying, within the natural language text, a second
plurality of word groups, wherein each word group of the
second plurality of word groups is associated with the concept
of the ontology;
responsive to receiving a confirmation that a word group
of the second plurality of word groups represents an object
associated with the concept of the ontology, modifying a
parameter of a classification model that produces a value
reflecting a degree of association of a given object with the
concept of the ontology.
Appeal Br. 20 (Claims Appendix).
The Rejection on Appeal
Claims 1–19 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–5.
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DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). On the record before us, Appellant has not persuaded us
of error. We adopt as our own the findings and reasons set forth in the
rejection from which the appeal is taken and in the Examiner’s Answer, and
provide the following additional discussion.
Rejection Under 35 U.S.C. § 101
The Examiner determined that the claims are directed to “modifying a
classification model for processing natural language words,” which is a
mental process and therefore an abstract idea. Final Act. 2–5; Ans. 3–5;
Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 217 (2014) (describing two-
step framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”). Further, the Examiner found that the
additional elements in the claims merely constituted conventional steps
performed on a generic computer, and therefore did not include additional
elements sufficient to amount to significantly more than the abstract idea.
Final Act. 3–5; Ans. 4–5. Accordingly, the Examiner concluded that the
claims constitute ineligible subject matter.
Appellant argues that the Examiner “fails to explain the alleged
relevance of . . . referenced court decisions” and “describes Appellant’s
claims at a high level of abstraction and untethered from the language of the
claims.” Appeal Br. 6–7. Appellant further argues that the claims “are
focused on a particular natural language processing method and a
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corresponding system,” and also “amount to significantly more than an
abstract idea.” Id. 7–8 (emphasis added).
After the Briefs were filed and Answer mailed in this case, the
USPTO published “Revised Subject Matter Eligibility Guidance”
synthesizing case law and providing agency instruction on the application of
§ 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we must look to whether a 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 One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)) (“Step 2A,
Prong Two”).
See 84 Fed. Reg. at 54–55.
Only if a claim recites a judicial exception and 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 id. 56 (collectively “Step 2B”).
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We begin our review with Step 2A, Prong One of the Guidance, as
applied to Appellant’s claim 1.2 Claim 1 recites “a method” comprising the
following elements: (1) “receiving,” by a computing device, “identifiers,”
the identifiers being “of a first plurality of word groups within a natural
language text, each word group comprising one or more natural language
words;” (2) “associating” an object represented by each word group with a
concept of an ontology; (3) “identifying,” within the natural language text, a
second plurality of word groups, wherein each word group of the second
plurality of word groups is “associated with” the concept of the ontology; (4)
responsive to receiving a confirmation that a word group of the second
plurality of word groups represents an object associated with the concept of
the ontology, “modifying a parameter” of a classification model that
“produces a value reflecting a degree of association” of a given object with
the concept of the ontology. Appeal Br. 20. Upon review of the foregoing
steps, we agree with the Examiner’s determination that the elements recited
in claim 1 merely constitute the idea of a classification model for natural
language processing, which is a process that could be performed by a human
mentally or using a pen and paper, i.e., a mental process. Ans. 4. Each of
the foregoing elements either recites collecting data (“receiving” identifiers,
and “identifying” word groups) or processing data (“associating” an object
with an ontology concept, and “modifying a parameter” of a model to reflect
“degree of association”). A human could, mentally or using a pen and

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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paper, (1) collect identifiers of word groups, (2) associate an object with an
ontology concept, (3) identify another word group associated with the
concept, and (4) modify a value of a model, as recited in claim 1. Ans. 3–5.
More specifically, each of the steps of claim 1 merely recites data
collection, data analysis, or data association similar to that in Electric Power
Group, which constitutes a mental process, i.e., one of the categories of
subject matter deemed abstract under the Guidance. Electric Power Group,
LLC, v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (“[W]e have
treated analyzing information by steps people go through in their minds, or
by mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category”); id. at 1353 (“[W]e have treated collected
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”).
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
application,” it is patent eligible. Appellant argues that claim 1 is directed to
“an improvement in computer-related technology.” Appeal Br. 7; see also
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Improving the functioning of a computer can reflect integration of an
idea into a “practical application.” Guidance Section III; see also DDR, 773
F.3d 1245; Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016). Appellant, however, does not explain, and we
do not discern, any improvement in technology from the claimed invention.
Compare DDR, 773 F.3d at 1258 (Fed. Cir. 2014) (“the claims at issue here
specify how interactions with the Internet are manipulated to yield a desired
result––a result that overrides the routine and conventional sequence of
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events ordinarily triggered by the click of a hyperlink.”) (emphasis added);
see also Bascom, 827 F.3d at 1350 (“harness[ing a] technical feature of
network technology in a filtering system” to customize content filtering).
The claims in DDR, for example, were “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks,” see, e.g., DDR, 773 F.3d at 1257, but Appellant’s
claim 1 recites receiving data and associating that data with other data, and
modifying a parameter (value) of a model, using generic computing
elements. See, e.g., Spec. ¶ 42 (describing a “general purpose processor, a
memory, and at least one communication interface”).
Appellant also does not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
Rather, claim 1 recites associations and modification of a model according
to algorithms not recited in the claim and only vaguely referenced in the
Specification. App. Br. 20 (Claims App.). Reciting a result-oriented
solution that lacks any details as to how the computer performed the
modifications is the equivalent of the words “apply it.” Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2015)
(citing Elec. Power Grp., LLC, v. Alstom S.A., 830 F.3d 1350, 1356 (Fed.
Cir. 2016) (cautioning against claims “so result focused, so functional, as to
effectively cover any solution to an identified problem”)); see also
CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011)
(mere data gathering does not make a claim patent-eligible). The data
gathering and processing steps in claim 1 do not add meaningfully to the
recited mental processes.
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Finally, under Step 2B of the Guidance, we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
(holding that patent eligibility inquiry may contain underlying issues of
fact).
Claim 1 recites a modification of a model by data gathering and
processing steps. See supra. We agree with the Examiner’s finding that
simply using standard computer elements (as described in the Specification,
see supra) to implement the claimed natural language processing is well
understood, routine, and conventional, and is not a meaningful limitation
that amounts to significantly more than an abstract idea. Ans. 5; see supra.
Appellant asserts that claim 1 recites “improvements in the field of natural
language processing, at least by employing a method of extracting entities
from natural language texts.” Reply Br. 10. Claim 1, however, recites no
particular algorithm, relationship, or hardware, and Appellant does not
identify any particular improvements recited in the claim. Thus, we agree
with the Examiner’s determination that “[l]ooking at the limitations as an
ordered combination adds nothing that is not already present when looking
at the elements taken individually.” Ans. 5.
Similarly, we are unpersuaded by Appellants’ argument that claim 1
does not “preempt the use of the claimed approach in all fields.” Reply Br.
8–9. Although “preemption may signal patent ineligible subject matter, the
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absence of complete preemption does not demonstrate patent eligibility.”
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362–63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193
(2015) (“[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”). Where, as here, “a patent’s claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework . . .
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We, therefore, sustain the rejection of claim 1 as constituting patent-
ineligible subject matter. Appellant does not argue the subject matter
ineligibility rejection of the remaining claims separately from claim 1.
Appeal Br. 10. Accordingly, for the same reasons as claim 1, we also
sustain the rejection of those claims.
SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–19 101 Ineligible Subject
Matter
1–19
Overall
Outcome
1–19

DECISION
We affirm the Examiner’s decision rejecting claims 1–19.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED