Ex Parte Kron et al

Patent Trial and Appeal Board

Jul 20, 2018

13924205 (P.T.A.B. Jul. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/924,205 06/21/2013
29693 7590 07/24/2018
WILEY REIN LLP
1776 K STREET N.W.
WASHINGTON, DC 20006
FIRST NAMED INVENTOR
Frederick W. Kron
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.
83419.0004 9303
EXAMINER
GISHNOCK, NIKOLAI A
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/24/2018 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):
ptodocket@wileyrein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK W. KRON,
NOAH FALSTEIN, and STACY MARSELLA1
Appeal2017-009604
Application 13/924,205
Technology Center 3700
Before CHARLES N. GREENHUT, JAMES P. CALVE, and
BRENT M. DOUGAL, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 2-19. Br. 4. Claim 1 is cancelled. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Medical Cyberworlds, Inc. is identified as the real party in interest. Br. 2.
Appeal2017-009604
Application 13/924,205
CLAIMED SUBJECT MATTER
Claims 2 and 18 are independent. Claim 2 is reproduced below.
2. A method of interfacing with a computer system having a
display device, the method comprising:
establishing a computer-controlled avatar within the
computer system, wherein the computer-controlled avatar has a
human appearance and is programmed to exhibit emotional
behavior and cognitive behavior emulating a human in response
to a user input received via an input device operably coupled to
the computer, wherein the input device includes an audio input
device to capture voice input and an imaging input device to
capture body language input;
presenting the computer-controlled avatar to the user via
the display device;
capturing the user input using the input device, wherein
the user's input comprises a plurality of emotional components
and a plurality of cognitive components; and
presenting a response to the user input via the avatar,
wherein the response to the user input comprises a plurality of
emotional components and a plurality of cognitive components.
Br. 14 (Claims App'x).
REJECTI0NS 2
Claims 2-19 are rejected as directed to patent-ineligible subject matter
under the judicial exception to 35 U.S.C. § 101.
Claims 2-13, 15, 18, and 19 are rejected on the ground ofnon-
statutory double patenting over claims 1, 2, 8-18, and 21 of Patent No. US
8,469,713 B2.
2 The Examiner withdrew rejections of claims 2-19 under 35 U.S.C. § 102
and§ 103 in response to Appellants' Response under 37 C.F.R. § 1.116,
filed on June 21, 2016. See Adv. Action 1, mailed July 6, 2016; Ans. 7.
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Application 13/924,205
ANALYSIS
Appellants argue claims 2-19 as a group. Br. 8. We select claim 2 as
representative, with claims 3-19 standing or falling with claim 1. 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
Appellants created a computer simulation to train physicians to "form
and maintain effective relationships with [their] patients." Spec. ,r 3. The
system is for "teaching empathy, patient-centeredness, professionalism,
interviewing micro-skills, and communications skills (e.g., bedside manner)
through constructivist learning in a social, three-dimensional environment
with emotionally expressive avatars." Id. ,r 2. The medical training system
teaches "medical personnel how to effectively interact with patients through
actual experience" in a medical simulation. Id. ,r,r 7, 8.
We analyze the patent-eligibility of the claimed method of interfacing
with a computer, as did the Examiner, under the two-step framework of
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) and
Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012). First, we consider whether claim 2 is directed to a patent-ineligible
concept such as a law of nature, natural phenomena, or abstract idea. Alice,
134 S. Ct. at 2355. If claim 2 is directed to a patent-ineligible concept, we
consider the elements of claim 2 individually and as an ordered combination
to determine whether there are additional elements that transform claim 2
into a patent-eligible application. Id. This search for an "inventive concept"
in the second step of the Alice/Mayo two-step analysis involves a search for
an element or combination of elements "sufficient to ensure that the patent
in practice amounts to significantly more than a patent upon the [ineligible
concept] itself." Id. (quoting Mayo, 132 S. Ct. at 1294).
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Appeal2017-009604
Application 13/924,205
Alice Step One
We agree with the Examiner that claim 2 is directed to an abstract
idea or concept of simulating personal interactions between a person and a
computer-controlled avatar. As such, the claims are directed to organizing
human activity and mental processes that people undertake in their daily
interactions with one another as they convey cognitive information with
emotional content in the form of non-verbal body language, expressions,
posture, and other indicators. See Spec. ,r 7 5 ( describing avatar emotions
that are conveyed by the computer simulation); Final Act. 4--5; Ans. 8-9.
Such mental processes, human interactions, and communications are
abstract ideas under Alice Step One analysis. Indeed, as the Examiner points
out, claim 2 is directed largely to receiving data input in the form of visual
and audio content and outputting data in the form of audio and visual data of
an avatar, which involve steps that people largely do in their minds during a
conversation. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353,
13 54 (Fed. Cir. 2016) ( we treat collecting information even when limited to
particular content that does not change its character as information as within
the realm of abstract ideas as we also treat analyzing information by steps
people go through in their minds or by mathematical algorithms as mental
processes and presenting the results of these abstract processes); Ans. 9.
Even if we limited the scope of claim 2 to the medical field involving
a user who is a physician and an avatar that represents a patient, the result is
the same. Claim 2 is directed to an abstract idea of simulating or automating
activities that physicians undertake in their daily routine and perform in their
minds. See SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x
950, 955 (Fed. Cir. 2014) (non-precedential); Final Act. 11.
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Application 13/924,205
The courts have treated claims to organizing human activity as an
abstract idea consistent with the Examiner's determination (Final Act. 4--5).
Alice, 134 S. Ct. at 2356 (hedging is method of organizing human activity);
Voter Verified, Inc. v. Election Sys. & Software LLC, 887 F.3d 1376, 1385
(Fed. Cir. 2018) (fundamental human activity of voting); Planet Bingo, LLC
v. VKGS LLC, 576 F. App'x 1005, 1008 (Fed. Cir. 2014) (non-precedential)
(managing a game of bingo); In re Salwan, 681 F. App'x 938,941 (Fed. Cir.
2017) (non-precedential) (organizing patient health information).
Indeed, claim 2 is analogous to computer role-playing games that are
used to organize human activity and control human interactions as players
represented by an avatar in a game environment interact with avatars of
other users and/or with computer-controlled avatars. See Final Act. 11. In
this regard, Appellants disclose that this role-playing simulation method can
assign goals and characteristics to users and improve the status of the user
within the medical simulation upon completion of a goal. Spec. ,r,r 30-35.
Claim 2 captures information relating to the emotional and cognitive
components of a user's mental processes and outputs information relating to
emotional and cognitive components of a patient's mental processes via an
avatar. Claim 2 recites a generic computer and display device with an avatar
programmed to exhibit emotional and cognitive responses that emulates a
human response to a user. A user inputs audio and video data and receives
audio and video data back from an avatar. Claim 2 does not recite particular
formats, innovative processes, or any effectiveness in the manner in which a
user's data is input or processed or the way in which an avatar's response is
output to a user. Claim 2 thus recites, at a very high level of generality, an
abstract idea of human interactions, mental processes, and human activity.
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Appeal2017-009604
Application 13/924,205
Alice Step Two
We do not consider claim 2 to embody an inventive step when we
consider the elements of claim 2 individually or as an ordered combination.
Claim 2 recites individual generic computer components ( computer system,
display device, audio input device, imaging input device) that perform their
standard functions of "capturing the user input using the input device" and
presenting an avatar response to the user input. There is no requirement that
the "emotional" or "cognitive" components of a user's input are captured or
processed in any particular or innovative way. Nor is there any limitation to
describe how the emotional or cognitive components of an avatar's response
relate to the user input or processing of the user's input.
In this regard, Appellants disclose that the system can be implemented
by any programming method known to those of skill in the art and can use
massively multi-player on-line gaming (MMOG) structures, procedures, and
methodologies" including taking place in a distributed, three-dimensional
synthetic environment that may include game play design elements and
simulated characters such as avatars. Spec. ,r 21.
There is no improvement to computer structure or functionality. The
Specification discloses that the claimed simulation method may be
implemented on a medical training server 205 that "can be a computer
including a memory, a processor, and input/out ports." Spec. ,r 25.
Similarly, user devices 215,220,225 can be a desktop computer, a laptop
computer, a cellular telephone, personal digital assistant, or any other
electronic device of a user that can communicate with medical training
server 205 through network 210, which "can be any network upon which
information can be transmitted as known to those of skill in the art." Id.
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Application 13/924,205
In addition to using generic computers, Appellants also disclose the
performance of conventional computer functions by the generic computer
components and network. For example, medical training server 205 can
maintain one or more medical simulations in which the server 205 receives
data from users within the simulation, sends data to users in the simulation,
and stores data corresponding to users of a medical simulation. Id.
If there is any innovation in the data capture, processing, or avatar
response, it does not reside in claim 2. Therefore, we are not persuaded by
Appellants' argument that the instant claims are focused on improvements to
computer functionality and, in particular, to improving how a user interfaces
with a computer by reciting the use of a computer-controlled avatar that "has
a human appearance and is programmed to exhibit emotional behavior and
cognitive behavior emulating a human in response to a user input .... " Br.
10 (Claim 2 "specifies that the response includes 'a plurality of emotional
components and a plurality of cognitive components."').
Claim 2 is not directed an improvement in computer technology.
Rather, claim 2 recites computers as tools to implement the abstract ideas of
simulating and organizing human interactions and mental processes that may
occur between a physician and a patient. In Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016), the claimed self-referential logical table
improved conventional computer database technology with increased
flexibility, faster search times, and less memory requirements. Enfish, 822
F.3d at 1336-37. In McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016), the claimed ordered set of specific rules improved the
ability of computers to produce accurate and realistic lip synchronization
and facial expressions in animated characters. McRO, 837 F.3d at 1314--15.
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Appeal2017-009604
Application 13/924,205
Appellants' assertions regarding Enfish and McRO (Br. 10-11) are not
persuasive because, claim 2 is not directed to improvements in computer
functions or to how a user interfaces with a computer beyond the abstract
idea of a human user interacting with a computer-controlled avatar. Claim 2
does not recite innovations or improvements in how the "audio input device"
or the "imaging input device" captures user's communications or the way in
which a computer-controlled avatar responds to such user input. Appellants
do not identify any claimed features, either individual limitations or ordered
combinations of features, that improve the way a user's voice or image data
is captured and processed or the way an avatar's response to user input is
presented. The lack of any such innovation highlights the fact that claim 2 is
directed to an abstract idea. 3 See Apple, Inc. v. Ameranth, Inc., 842 F .3d
1229, 1245 (Fed. Cir. 2016) ("Here, Ameranth claims no more than the use
of existing handwriting and voice capture technologies using a computer
system . . . . Appending these preexisting technologies onto those
independent claims does not make them patentable."); see also Ans. 8-12.
Even if the idea of a human interacting with a computer-controlled
avatar via input of voice and image data in a simulation or training scenario
is novel, it still is an abstract idea. Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1151 (Fed. Cir. 2016) ("But a claim for a new abstract idea is
still an abstract idea.").
3 For example, the Specification discloses that a speech analyzer can be used
to analyze a user's voice to "detect nervousness, stress, tone, or any other
voice characteristics known to those of skill in the art" and "[ t ]hese voice
characteristics can be used to condition the user/patient interaction." Spec.
,r 58. Similarly, a camera can capture user movements, expressions, and
body language and this captured information can be attributed to the user's
avatar so the avatar behaves as the user is behaving. Id.
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Application 13/924,205
"The 'novelty' of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981 ); Versata Develop.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (claims
improved abstract idea not a computer's performance); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 88-90 (2012) (the patent
eligibility of an abstract idea does not depend on its alleged novelty or non-
obviousness ); Two-Way Media, 874 F.3d at 1339--40 ("Eligibility and
novelty are separate inquiries.").
Nor are we persuaded by Appellants' arguments that the "instant
claims require specific characteristics - specific types of user inputs with
specific sub-components that result in specific types of outputs with specific
sub-components" and thus are directed to "a specific means or method that
improves the relevant technology." Br. 10; see Ans. 8-12.
The "computer-controlled avatar" merely simulates human behavior
with emotional and cognitive components. Appellants do not assert that the
avatar implements innovative hardware components or software functions or
that an avatar displaying emotions and cognitive behavior is an improvement
in the computer technology arts or even in the gaming arts or the simulation
or modeling technologies. Avatar emotions can be conveyed through dialog
choices or non-verbally through body language, expressions, posture,
textural indicators, and other indicators. Spec. ,r 7 5. Confidence level, self-
esteem, mood, and emotion can be portrayed through facial expressions,
gestures, posture and/or other body language of a physician avatar 445. Id.
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Application 13/924,205
The claimed user interface with a computer includes "an audio input
device to capture voice input and an imaging input device to capture body
language input." Br. 14 (Claims App'x). Neither user interface device is
alleged by Appellants to be novel or improvements over known computer
user interface devices that receive audio or video inputs from a user. Nor do
Appellants identify any aspects of the input or output of the emotional and
cognitive components of the audio and visual data that is unconventional.
Appellants disclose that the medical simulation may occur in a three-
dimensional world with three-dimensional avatars that possess an extensive
amount of detail, expression, cognition, emotion, and realism and can be
modeled after the real world (Spec. [84]), but claim 2 does not require such a
three-dimensional simulation or avatar. Neither the individual limitations of
claim 2, nor claim 2 considered as a whole, reflect an innovation or technical
improvement sufficient to elevate the abstract idea to a patent-eligible status.
For all the foregoing reasons, we sustain the rejection of claims 2-19
as being directed to patent-ineligible subject matter under 35 U.S.C. § 101.
Claims 2-13, 15, 18, and 19
Rejected For Non-Statutory Double Patenting
The Examiner rejects claims 2-13, 15, 18, and 19 on the ground of
non-statutory double patenting over claims 1, 2, 8-18, and 21 of Patent No.
US 8,469,713 B2. Final Act. 3. Appellants do not respond to this rejection.
See Br. 7-13; see also Response Under 3 7 C.F .R. § 1.116, filed June 21,
2016, at 2 (reserving the right to file a terminal disclaimer to the extent
necessary upon receiving an indication that the case is otherwise in condition
for allowance). Thus, we summarily sustain this rejection.
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Application 13/924,205
DECISION
We affirm the rejection of claims 2-19 under 35 U.S.C. § 101.
We affirm the rejection of claims 2-13, 15, 18, and 19 fornon-
statutory double patenting.
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).
AFFIRMED
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