Ex Parte BEN EZRA et al

Patent Trial and Appeal Board

Feb 14, 2019

14261981 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/261,981 04/25/2014 Y ossef BEN EZRA
122066 7590 02/19/2019
M&B IP Analysts, LLC
500 Headquarters Plaza
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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
ATTORNEY DOCKET NO. CONFIRMATION NO.
VTXTP0016 6268
EXAMINER
LELAND III, EDWIN S
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
02/19/2019 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):
pair@mb-ip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSSEF BEN EZRA, SHAI NISSIM,
and GERSHON SILBERT
Appeal2018-006588 1
Application 14/261,981
Technology Center 2600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-13 and 15-25. App. Br. 6. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and ENTER NEW GROUNDS OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
1 The real party in interest is listed as VivoText, Ltd. App. Br. 3.
Appeal2018-006588
Application 14/261,981
STATEMENT OF THE CASE
Appellants' disclosure relates to "supervised creation of a speech
samples library for text-to[-]speech synthesis." Abstract.
Claim 1 is independent, and reproduced below for reference:
1. A computerized method for supervised creation of a
speech samples library for text-to-speech (TTS) synthesis,
compnsmg:
tracking at least one speech unit in an existing speech
samples library to determine if the existing speech samples
library achieves a desired quality;
receiving at least one speech sample pronounced by a user;
analyzing, by a speech recognition system, the at least one
received speech sample to identify at least one speech unit
pronounced by the user that is necessary to obtain the desired
quality of the new speech samples library, wherein the analysis
includes at least identifying at least one speech sample
pronounced by the user;
determining, based on the analysis, a priority of the at least
one speech unit and the at least one speech sample, wherein the
priority represents a degree of importance that a speech unit has
within a given speech samples library; and
creating a speech samples library by storing the at least
one necessary speech unit in the existing speech samples library.
The Examiner's Rejection2
Claims 1-13 and 15-25 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception to patent eligibility without significantly
more. Final Act. 3.
2 The rejection of claims 1-13 and 15-25 under 35 U.S.C. § 112, second
paragraph, was withdrawn in the Advisory Action. See Final Act. 3, Adv.
Act. 2.
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Arguments Appellants could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because the claims are
directed to a method for tracking units in a speech sample library
to determine if there is a desired quality, receiving a speech
sample, analyzing the speech sample to identify a unit to improve
the quality of the library, determining a priority of a unit from
the speech sample and creating a speech samples library by
adding the unit to the existing library.
Ans. 2. The Examiner determines the claims are similar to, inter alia, "data
recognition and storage," "[c]ollection, storage, and recognition of data,"
and "[ c ]ollecting information, analyzing it, and displaying certain results of
the collection and analysis." Ans. 2-3 ( citations omitted).
Appellants argue the Examiner's rejection is in error:
the claims are not directed to an abstract idea. As noted above,
the Office Action suggests that the claims are supposedly
directed to the abstract ideas of "data recognition and storage"
and "organizing information through mathematical
correlations." However, the claims do not merely recognize and
store data, or organize information through mathematical
correlations. Rather, the claims include features related to
determining speech units that are necessary to obtain a desired
quality as well as determining priorities of speech units and
speech samples. These features do not amount to recognizing,
storing, and organizing data, and are not otherwise directed to
such abstract ideas.
App. Br. 8 ( emphases omitted).
After the mailing of the Answer and the filing of the Briefs in this
case, the US PTO published revised guidance on the application of§ 101.
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Application 14/261,981
2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum"). Under the
Memorandum, the Office first looks to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(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 Memorandum.
Pursuant to the Memorandum, we are persuaded the Examiner's
rejection is in error. Claim 1 is directed to the supervised creation of a
speech samples library. The claim does not recite a mental process because
the steps are not practically performed in the mind. See Memorandum,
Section I (Groupings of Abstract Ideas). The claim does not recite any
mathematical relationships, formulas, or calculations; nor does the claim
recite any method of organizing human activity such as a fundamental
economic concept or managing interactions between people. See id.; see
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Application 14/261,981
also Memorandum, Section III (A)(l) (Prong One: Evaluate Whether the
Claim Recites a Judicial Exception).
Accordingly, claim 1 "does not recite a judicial exception (a law of
nature, natural phenomenon, or subject matter within the enumerated
groupings of abstract ideas in Section I)," so "the claim is eligible at Prong
One of revised Step 2A." Memorandum, Section III (Instructions for
Applying Revised Step 2A During Examination). We reverse the rejection
of independent method claim 1, as well as corresponding independent
system claim 13, as well as all claims that depend therefrom.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection and separately reject independent claim 1 under
pre-AIA 35 U.S.C. § 112, first and second paragraphs.
We first reject independent claim 1 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement,
because the disclosure does not convey with reasonable clarity to those
skilled in the art that, as of the filing date, Appellants were in possession of
the claimed invention. See, e.g., Purdue Pharma L.P. v. Faulding Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000) ( citations omitted). In the "analyzing" step
of claim 1, a "speech recognition system" is recited, but the disclosure is
devoid of any description of this system. See, e.g., Spec. ,r,r 14 and 22,
describing "speech recognition (SR) system 170." Similarly, the disclosure
does not provide sufficient description, such as an algorithm, of how to
perform the analyzing step. Thus, we do not find any indication that
Appellants possessed a "speech recognition system," or, otherwise, how to
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Application 14/261,981
achieve the claimed analyzing step. See Vasudevan Software, Inc. v.
MicroStrategy, Inc., 782 F.3d 671, 683 (Fed. Cir. 2015) ("The more telling
question [for written description analysis] is whether the specification shows
possession by the inventor of how accessing disparate databases is
achieved."); see also In re Wilder, 736 F.2d 1516, 1521 (Fed. Cir. 1984)
(Affirming a rejection for lack of written description because the
specification does "little more than outlining goals appellants hope the
claimed invention achieves and the problems the invention will hopefully
ameliorate."); Ex parte Smith, Appeal 2012-007631, slip op. at 21 (PTAB
Mar. 14, 2013) (informative) ("Beyond general statements of the function to
be performed, which, at most, may render the claimed function obvious, the
inventor has not shown how the recited opinion timeline is generated,"
which "is not sufficient because a description that merely renders the
invention obvious does not satisfy the written description requirement.").
Second, we reject claim 1 as indefinite. Claim 1 recites several types
of "speech units," such as:
(1) "at least one speech unit in an existing speech samples library";
(2) "at least one speech unit pronounced by the user";
(3) "the at least one speech unit"; and
( 4) "the at least one necessary speech unit."
The correspondence among the various recited speech units is unclear.
Claim 1 also recites "the new speech samples library," and there is no
antecedent basis for this limitation. For these reasons, we find claim 1 to be
indefinite.
We note the Patent Trial and Appeal Board is a review body, rather
than a place of initial examination. We have rejected independent claim 1
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based on our authority under 37 C.F.R. § 4I.50(b). We have not, however,
reviewed the remaining claims to the extent necessary to determine whether
those claims fail to meet the requirements of 35 U.S.C. § 112, first and
second paragraphs. We leave it to the Examiner to ascertain whether claims
2-13 and 15-25 should be rejected on similar grounds to those set forth
herein.
DECISION
We reverse the Examiner's rejection of claims 1-13 and 15-25 under
35 U.S.C. § 101.
We newly reject claim 1.
37 C.F.R. § 4I.50(b) provides a "new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that Appellants, 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 ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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