Ex Parte Dohring et al

Patent Trial and Appeal Board

Feb 26, 2018

14704877 (P.T.A.B. Feb. 26, 2018)

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.
14/704,877 05/05/2015 Doug Dohring 40288-709.301 4071
21971 7590 02/28/2018
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
GRANT, MICHAEL CHRISTOPHER
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
patentdocket @ wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUG DOHRING, DAVID HENDRY,
STEPHANIE YOST, and JERRY CHIAWEI CHEN
Appeal 2017-003236
Application 14/704,877
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-003236
Application 14/704,877
CLAIMED SUBJECT MATTER
The claims are directed to a language phoneme practice engine. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A computer-based language phoneme practice system
comprising:
(a) a digital processing device comprising at least one processor,
a memory, and an operating system configured to perform
executable instructions; and
(b) a computer program, provided to said digital processing
device, including executable instructions that create a language
phoneme practice engine, wherein said engine comprises:
i. a taxonomy of phonemes of a target language;
ii. a software module for providing a first interface for
practicing each said phoneme in said taxonomy, wherein
said interface allows a learner to optionally access a visual
representation and an auditory representation of each said
phoneme in said taxonomy;
iii. a software module for providing a second interface for
practicing each said phoneme in the context of the
beginning, middle, and end of words of said target
language, the interface providing one or more words
beginning with the selected phoneme, one or more words
with the selected phoneme in their middle, and one or
more words ending with the selected phoneme, wherein
the interface allows the learner to access a visual and
auditory representation of each word, wherein each word
is depicted as a composition of phonemes, wherein each
phoneme in each word is interactive and allows the learner
to access a visual and an auditory representation of each
phoneme in each word; and
iv. a navigation element, wherein the navigation element
allows the learner to navigate between the first interface
and the second interface.
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Appeal 2017-003236
Application 14/704,877
REJECTIONS
Claims 1—19 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to an abstract idea without significantly more.
Claims 1—19 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims of U.S. Patent No. 9,058,751.
This rejection is not contested and, according to Appellants, rendered moot
by the filing of the terminal disclaimer with the Reply Brief of Dec. 22,
2016. We leave final determination of the acceptability of the terminal
disclaimer to the Examiner and summarily sustain this rejection without
reaching the merits thereof. See e.g. In re Berger, 279 F.3d 975 (Fed. Cir.
2002) (in which the Board affirmed an uncontested rejection of claims under
35 U.S.C. § 112, second paragraph, and on appeal the Federal Circuit
affirmed the Board’s decision and found that the appellant had waived his
right to contest the indefmiteness rejection by not presenting arguments as to
error in the rejection on appeal to the Board). See also, Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (“the applicant can waive appeal of a
ground of rejection”).
OPINION
Principles of Law
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has consistently held that
this provision contains an important implicit exception: laws of nature,
natural phenomena, and abstract ideas are not patentable. See Alice Corp. v.
CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental
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Application 14/704,877
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.”). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, an application
of these concepts may be deserving of patent protection. See Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94
(2012). In Mayo, the Court stated that “to transform an unpatentable law of
nature into a patent-eligible application of such a law, one must do more
than simply state the law of nature while adding the words ‘apply it.’”
Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “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, 132
S. Ct. at 1298, 1297).
In Gottschalk, the Court, citing O’Reilly v. Morse (56 U.S. 62 (1853)),
cautioned that a claim “so abstract and sweeping as to cover both known and
unknown uses” is not directed to patent-eligible subject matter under 35
U.S.C. § 101. Gottschalk v. Benson, 409 US at 68. In Alice the Supreme
Court reaffirmed this principle:
We have long held that this provision contains an important
implicit exception: Laws of nature, natural phenomena, and
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Application 14/704,877
abstract ideas are not patentable. We have interpreted § 101 and
its predecessors in light of this exception for more than 150 years.
We have described the concern that drives this exclusionary
principle as one of pre-emption. Laws of nature, natural
phenomena, and abstract ideas are ‘the basic tools of scientific
and technological work. [Monopolization of those tools through
the grant of a patent might tend to impede innovation more than
it would tend to promote it, thereby thwarting the primary object
of the patent laws. We have repeatedly emphasized this
concern . . . that patent law not inhibit further discovery by
improperly tying up the future use of these building blocks of
human ingenuity.
Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. at 2354 (quotations and
citations omitted).
Analysis
With representative claim 1 (see App. Br. 10-21; 37 C.F.R.
§ 41.50(c)(l)(iv)), Appellants seek to reserve exclusive rights to, in effect,
any computer-based system for learning phonemes in isolation (module ii)
or context (module iii). Final Act. 2. It cannot reasonably be argued that this
is not, first, an attempt to reserve exclusive rights to an abstract idea, and
second, an attempt to reserve exclusive rights to essentially any computer-
based implementation of a notoriously old and fundamental tool or teaching
method used by human beings for language learning.1 Appellants take issue
with the Examiner “strip[ing] away” other aspects of the claim. App. Br. 12;
1 At the outset, we reject Appellants’ contention that the absence of a
rejection under §§ 102 or 103(a) provides evidence that the claimed subject
matter is neither generic nor conventional. App. Br. 19. The avoidance of
piecemeal examination is merely a preferential examination practice. See
MPEP § 707.07(g). How Examiners choose to allocate their time and
resources is ultimately a procedural matter within the Examiner’s discretion.
The absence of a prior-art rejection does not create any binding legal effect
for purposes of an analysis under § 101.
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Application 14/704,877
Reply. Br. 13; Ans. 8. However, a careful examination of the remaining
language in the claim reveals nothing more than generic and conventional
steps and structures necessary for computerized implementation. Clearly the
preamble and elements (a) and (b) contain no more than this. Examples are
“computer-based,” “digital processing device,” “processor,” “memory,”
“operating system,” and “executable instructions.” Limitation i amounts to a
database, and limitation iv amounts to a mechanism to switch between
different parts of the interface. It cannot reasonably be argued that the latter,
essentially the only limitation integrating elements i—iii, makes the “ordered
combination” something more than the sum of its parts. App. Br. 15—17.
Element iv simply allows choosing between the particular mechanism to
teach the phoneme. It cannot reasonably be argued that language tutors have
not employed both isolated and contextual phoneme teaching methods but
typically would not use both systems at the same time.
Limitation ii has a visual and auditory representation of the phoneme.
It cannot reasonably be argued that this aspect, essentially a pronunciation
key coupled with auditory assistance,2 is not a notoriously old, generic, and
fundamental tool used for language learning with or without a computer.
The same is true of limitation iii which demonstrates these phonemes in
context.3 The use of abstractions to claim broad generic objectives does not
improve a technical field (App. Br. 17—18); it preempts improvements in it.
2 For example, /a/ or /ay/ are used to visually represent or demonstrate the
sound of the letter a (Spec. 11; Fig. 1) in the manner symbols such as a, a
and ei, a are traditionally used.
3 For example a visual representation of map as /m/a/p/ and coupling it with
a picture (Spec. 12—15; Fig. 2) is similar to how it might be described in a
pronunciation key as map or taught by sight or association to a child,
respectively.
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Application 14/704,877
Claim 1 lacks any limitations directed to specific structures, techniques, or
algorithms for providing the generic modules which cover fundamental
human language learning tools. In other words, the claim lacks “significantly
more.” See Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. at 2353.
Although we make the aforementioned points for emphasis, we agree
that the Examiner has provided a thorough and comprehensive analysis of
the issues raised by Appellants, and we therefore adopt the Examiner’s
analysis in that regard (Ans. 3—17) as our own. See, e.g., In re Paulsen, 30 F.
3d 1475, 1478 n. 6 (Fed. Cir. 1994) accord In re Cree, No. 2015-1365 n. 2
(Fed. Cir. Mar. 21, 2016).
DECISION
The Examiner’s rejections are sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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