Ex Parte Heck et al

Patent Trial and Appeal Board

Feb 27, 2019

13769679 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/769,679 02/18/2013
27488 7590 03/01/2019
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
FIRST NAMED INVENTOR
Larry Heck
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.
14917.2275US01/338085.0l 9947
EXAMINER
JACKSON, JAKIEDA R
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
USPT027 488@merchantgould.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY HECK, DILEK HAKKANI-TUR, and
GOKHANTUR
Appeal2018-000352
Application 13/769,679
Technology Center 2600
Before JOSEPH L. DIXON, LINZY T. McCARTNEY, and
NORMAN H. BEAMER, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134 of the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2018-000352
Application 13/769,679
BACKGROUND
The present patent application concerns an unsupervised training
approach for Spoken Language Understanding systems. See Specification
,r 3, Abstract, filed March 22, 2013 ("Spec."). Claims 1, 10, and 17 are
independent. Claim 1 illustrates the claimed subject matter:
1. A method for extracting natural language examples for
natural language processing, comprising:
accessing, by a computer network, structured content that
includes a first entity in a defined relationship with a second
entity;
identifying the defined relationship between the first entity
and the second entity;
automatically performing a search query using the first
entity, the second entity, and the defined relationship;
obtaining results from the search query, wherein the
results include natural language surface forms;
parsing the natural language surface forms to obtain a
pattern, wherein parsing the natural language includes:
determining natural language patterns that are used
to relate the first entity and the second entity;
analyzing the natural language patterns to identify
dependencies
extracting the dependencies; and
updating a natural language system with the obtained
pattern such that the natural language system includes a new
relationship based on the dependencies for at least one of the first
entity and the second entity based on the obtained pattern.
Appeal Brief 20, filed January 25, 2017 ("App. Br."). 1
1 The Appeal Brief lacks page numbers. We treat the Appeal Brief as if it
were numbered starting with the page containing the "Real Party in Interest"
heading.
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Application 13/769,679
Claims 1-20
Claim 10
REJECTION2
§ 101
§ 101
DISCUSSION
We have reviewed the Examiner's rejections and Appellants'
arguments, and we disagree with Appellants that the Examiner erred. As
consistent with the discussion below, we adopt the Examiner's findings,
conclusions, and reasoning in the Final Office Action mailed May 26, 2016
("Final Act.") and the Answer mailed May 9, 2017 ("Ans.").
Claims 1-20
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"Laws of nature, natural phenomena, and abstract ideas are not patentable."
Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is "directed to one of those patent-ineligible
concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of
[the] claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
2 The Examiner withdrew the rejections of claims 1-20 under 35 U.S.C.
§ 103. Answer 2-3, mailed May 9, 2017.
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Application 13/769,679
patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an "inventive concept," "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."' Alice, 573 U.S. at 217-18 ( alteration in original) ( quoting
Mayo, 566 U.S. at 72-73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("2019 Eligibility Guidance"). Under the guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim ( 1) recites an abstract idea listed in the guidance and (2) fails to
integrate the recited abstract idea into a practical application. See 2019
Eligibility Guidance 84 Fed. Reg. at 51. If the claim is directed to an abstract
idea, as noted above, we then determine whether the claim has an inventive
concept. The guidance explains that when making this determination, we
should consider whether the additional 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-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality." 2019 Eligibility Guidance
84 Fed. Reg. at 56.
With these principles in mind, we tum to the Examiner's§ 101
rejection.
Abstract Idea
The Examiner determined that claim 1 is directed to a "mental
process," one of the abstract idea groups listed in the 2019 Eligibility
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Guidance. See Final Act. 4--5 ( determining that the limitations recited in
claim 1 encompass acts people can perform in their minds or using pen and
paper); Ans. 6 ( explaining that the recited steps "may be done by a human
without the aid of a machine" and citing cases involving mental processes);
2019 Eligibility Guidance 84 Fed. Reg. at 52 (listing "Mental processes-
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion)" as one of the enumerated groupings of
abstract ideas (footnote omitted)). For the reasons explained below, we see
no error in this determination.
A claim recites a mental process when the claim encompasses acts
people can perform using their minds or pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed.
Cir. 2011) ( determining that a claim whose "steps can be performed in the
human mind, or by a human using a pen and paper" is directed to an
unpatentable mental process). This is true even if the claim recites that a
generic computer component performs the acts. See, e.g., Versata Dev. Grp.,
Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) ("Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person's mind."); see also 2019 Eligibility Guidance 84 Fed. Reg. at
52 n.14 ("If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.").
Here, most of the limitations recited in claim 1 encompass an act
people can perform using their minds or pen and paper. As determined by
the Examiner, people can perform the "accessing" and "identifying" steps by
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simply looking at the recited structured content and recognizing a defined
relationship between first and second entities. See Final Act. 4. People can
perform the "obtaining" and "parsing" steps (including the recited
"determining," "analyzing," and "extracting") by looking at the recited
results, identifying the recited natural language patterns and dependencies,
and writing down or remembering the dependencies and the obtained
pattern. See Final Act. 4--5. Finally, as determined by the Examiner, people
can perform the "updating" step by writing the recited new relationship on a
piece of paper. See Final Act. 5.
Despite the Examiner determining that these steps encompass acts that
people can perform using their minds or pen and paper, Appellants have not
explicitly challenged this determination. Compare Final Act. 4--5, and Ans.
6, with App. Br. 4--9, and Reply Brief 2-10, mailed July 10, 2017 ("Reply
Br."). Appellants have thus forfeited the argument that these steps do not
encompass acts that people can perform using their minds or pen and paper.
See 3 7 C.F .R. 41.3 7 ( c )(1 )(iv) ( explaining that with some exceptions
"arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal."); 37 C.F.R.
§ 41.52 (explaining that with some exceptions "[a]rguments not raised, and
[ e ]vidence not previously relied upon ... are not permitted in the request for
rehearing"). We thus see no reason to disturb this aspect of the Examiner's
rejection.
The additional elements recited in claim 1 do not integrate this mental
process into a practical application. Along with the steps discussed above,
claim 1 recites "a computer network" and "automatically performing a
search query using the first entity, the second entity, and the defined
relationship." App. Br. 20. The written description indicates that the recited
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computer network encompasses generic computer components that perform
generic functions. See, e.g., Spec. ,r 71 (explaining that "[t]he embodiments
and functionalities described herein may" use "a distributed computing
network, such as the Internet or an intranet"). Simply reciting a generic
computer component that performs in a generic manner does not integrate an
abstract idea into a practical application. See, e.g., Alice, 573 U.S. at 223
("[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention."); see also 2019
Eligibility Guidance 84 Fed. Reg. at 55 (identifying "merely us[ing] a
computer as a tool to perform an abstract idea" as an example of when an
abstract idea has not been integrated into a practical application).
As for the "automatically performing a search query" step, this step
simply gathers data for other method steps and is thus insignificant extra-
solution activity. See, e.g., CyberSource, 654 F.3d at 1370 ("We have held
that mere '[data-gathering] step[s] cannot make an otherwise nonstatutory
claim statutory."' (alterations in original) (quoting In re Grams, 888 F.2d
835, 840 (Fed. Cir. 1989))); see also 2019 Eligibility Guidance 84 Fed. Reg.
at 55 (identifying "add[ing] insignificant extra-solution activity to the"
abstract idea as an example of when an abstract idea has not been integrated
into a practical application).
Appellants' arguments have not convinced us otherwise. First,
Appellants contend the Examiner failed to show that claim 1 is directed to
extracting natural language, using correlations, and organizing human
activities. See App. Br. 6-7; Reply Br. 2---6. Even if we were to agree that
claim 1 is not directed to extracting natural language, using correlations, or
organizing human activities, as explained above, the Examiner also
determined that claim 1 is directed to a mental process. See Final Act. 4--5;
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Ans. 6. Appellants have not persuasively challenged this determination. See
App. Br. 4--9; Reply Br. 2-10.
Second, Appellants argue that claim 1 "includes significant limitations
that limit the application of the claimed method to" a particular "technical
realm." App. Br. 6; see also id. at 8 (arguing that "claim 1 has a significantly
more narrow and tailored scope within updating a natural language
understanding system"); Reply Br. 8 (arguing that claim 1 is within "the
environment of improving natural language systems"). Even assuming that
claim 1 is limited to a particular realm or environment, this fact does not
show that the claim is directed to patent-eligible subject matter. "An abstract
idea does not become nonabstract by limiting the invention to a particular
field of use or technological environment." Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1366 (Fed. Cir. 2015). See 2019
Eligibility Guidance 84 Fed. Reg. at 55 (identifying "link[ing] the use of a
judicial exception to a particular technological environment or field of use"
as an example of when an abstract idea has not been integrated into a
practical application).
Third, Appellants assert that claim 1 improves computer technology
because the recited method "may be used to automate the formation of
training data to improve a natural language system." Reply Br. 8 ( citing
Spec. ,r,r 3, 24); see also id. (asserting that the claimed method "facilitates
the automation of providing training data to natural language systems"). But
claim 1 does not recite this improvement. Except for the "automatically
performing a search query" step, the steps recited in claim 1 do not require
automatic performance. See App. Br. 20. Appellants have not explained-
nor is it readily apparent from claim 1 or the written description-how
automatically performing the recited search query alone results in
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Application 13/769,679
automatically identifying training data for a natural language system. See
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
2015) ( determining that claims are not directed to improving computer
performance when the "supposed benefits are not recited in the claims at
issue").
In any event, to the extent that Appellants rely on steps that form part
of the identified mental process to show the claim provides a technological
improvement, these steps are not "additional elements" that "'transform the
nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217
(quoting Mayo, 566 U.S. at 78); see also 2019 Eligibility Guidance 84 Fed.
Reg. at 55 n.24 ("USPTO guidance uses the term 'additional elements' to
refer to claim features, limitations, and/ or steps that are recited in the claim
beyond the identified judicial exception." (emphasis added)).
For the above reasons, we agree with the Examiner that claim 1 is
directed to a mental process.
Inventive Concept
Because we agree with the Examiner that claim 1 is directed to an
abstract idea, we next consider whether claim 1 recites an inventive concept.
The Examiner found that claim 1 does not recite an inventive concept
because the additional elements recited in the claim consist of "generic
computer components that operate in a well-understood, routine, and
conventional fashion previously known to the pertinent industry." Ans. 3.
We agree. As discussed above, the additional elements recited in
claim 1 include "a computer network" and the "automatically performing a
search query" step. The written description makes clear that the recited
"computer network" encompasses generic computer components that
perform well-understood, routine, and conventional activity. See, e.g., Spec.
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,r 71 ( explaining that "[ t ]he embodiments and functionalities described
herein may" use "a distributed computing network, such as the Internet or an
intranet"). Similarly, the written description indicates that the "automatically
performing a search query" step encompasses well-understood, routine, and
conventional activity such as using a well-known web search engine to
perform a search. See Spec. ,r 36 ("According to an embodiment, web
queries that are formed are executed by a web search engine ( e.g. BING,
GOOGLE, and the like)."); see also App. Br. 2 (mapping the "automatically
performing a search query" step to paragraph 36 of the written description).
Because these additional claim elements "simply append[] conventional
steps, specified at a high level of generality, to" an abstract idea, these
elements----considered alone or in combination----do not make the abstract
idea patent eligible. Mayo, 566 U.S. at 82. See 2019 Eligibility Guidance 84
Fed. Reg. at 56 (explaining that "simply append[ing] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality" indicates "that an inventive concept may not be
present").
Appellants contend otherwise. According to Appellants, claim 1 has
an inventive concept because the claim recites "non-conventional and non-
generic steps" (both the steps themselves and how they are arranged) and
does not preempt all uses of the identified abstract idea. Reply Br. 7-8; App.
Br. 9. Appellants also contend the claim does not recite well-understood,
routine, conventional activities. Reply Br. 6-7; App. Br. 9.
Appellants have not persuaded us the Examiner erred. First,
Appellants do not provide persuasive evidence or reasoning to support the
assertion that claim 1 recites unconventional steps ( or an unconventional
arrangement of steps). Appellants simply summarize the claim language and
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assert that the claim "provides for a novel way of updating a natural
language system" and does not involve "generic computer functions that are
well-understood, routine and conventional activities." Reply Br. 7; see also
App. Br. 9. These conclusory assertions do not establish the Examiner erred.
As for Appellants' contention that claim 1 does not raise preemption
concerns, even if claim 1 does not preempt all methods for performing the
abstract idea, this fact alone does not show the claims have an inventive
concept. As the Federal Circuit has repeatedly explained, failing to preempt
all of a particular field does not make a claim less abstract. See, e.g., OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015)
("And that 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."); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
13 71, 13 79 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.").
We thus agree with the Examiner that claim 1 does not contain an
inventive concept.
Conclusion
For at least the above reasons, we agree with the Examiner that claim
1 is directed to an abstract idea and does not include an inventive concept.
Accordingly, we sustain the Examiner's rejection of claim 1 under§ 101.
Because Appellants have not presented separate, persuasive arguments for
claims 2-20, we also sustain the Examiner's rejection of these claims under
§ 101.
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Claim 10
The Examiner also rejected claim 10 under § 101 because the claim
recites "[a] computer-readable medium" that encompasses nonstatutory
signals. See Final Act. 5---6. Appellants have not challenged this rejection on
appeal. See App. Br. 10. As a result, we summarily sustain this rejection. 3
DECISION
Claims 1-20 § 101 1-20
Claim 10 § 101 10
Summar 1-20
No 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
3 We note that the written description supports the Examiner's rejection. See,
e.g., Spec. ,r 81 ("The term computer readable media as used herein may
also include communication media. Communication media may be
embodied by computer readable instructions, data structures, program
modules, or other data in a modulated data signal, such as a carrier wave or
other transport mechanism, and includes any information delivery media."
(emphasis added)).
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