Ex Parte LEWIS et al

Patent Trials and Appeals Board

Jul 16, 2018

14337332 - (D) (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/337,332 07/22/2014
146048 7590 07/18/2018
Polsinelli PC_Nuance Communications, Inc.
2810 Laurian Lane, Suite 300
Dunkirk, MD 207 54
FIRST NAMED INVENTOR
Steven Hart LEWIS
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.
2008-0440-CON 5799
EXAMINER
JACKSON, JAKIEDA R
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
qle@polsinelli.com
IP.Inbox@Nuance.com
patentgroup@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN HART LEWIS and JOHN BALDASARE 1
Appeal2018-000271
Application 14/337,332
Technology Center 2600
Before JOSEPH L. DIXON, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
1 Appellants identify Nuance Communications, Inc. as the real party in
interest. App. Br. 3.
Appeal2018-000271
Application 14/337,332
According to the Specification, the present invention relates to
auditory verification of a human user. See generally Spec. 1. Claim 1 is
exemplary:
1. A method comprising:
selecting, via a processor of a computing device, text
comprising a non-word which, when pronounced by a text-to-
speech process, will produce a single-word-like audible
pronunciation of the non-word, wherein the non-word does not
exist within natural languages and is not located in a grammar;
transmitting, via the processor, the text over a network to
a user device, wherein the user device is capable of executing
the text-to-speech process to produce an audible challenge
requesting the user to spell the non-word;
receiving, from the user device and over the network, an
audible response to the audible challenge;
verifying, via the processor, an identity of the user based
on the audible response; and
transmitting, via the processor and over the network, a
confirmation of the identity of the user based on the audible
response.
Rejection
Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
ANALYSIS
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
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appeal is taken (Final Act. 3--4) and (ii) the Answer (Ans. 2-9) to the extent
they are consistent with our analysis below. 2
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 3--4; Ans. 2-
9. In particular, the Examiner concludes the claims are directed to the
abstract idea of selecting, transmitting, and verifying information. See Ans.
2-5. The Examiner determines the claims do not identify an inventive
concept to transform the nature of the claims into a patent-eligible
application. See Ans. 2-9. Appellants argue the Examiner erred. See App.
Br. 7-17; Reply Br. 3-7.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title." 35 U.S.C. § 101. That provision "'contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
2 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 4I.41(b)(2).
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Application 14/337,332
"[ w ]hat else is there in the claims before us?" ... To answer
that question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application .... We have
described step two of this analysis as a search for an "'inventive
concept'" -i.e., 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 Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has "treated collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas."
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a
similar vein, we have treated analyzing information [including manipulating
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
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abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added);
see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016).
The rejected claims "fall into a familiar class of claims 'directed to' a
patent-ineligible concept." Elec. Power, 830 F.3d at 1353. Contrary to
Appellants' arguments (App. Br. 7-17; Reply Br. 3-7), the claims are
similar to the claims of Electric Power, and are focused on the combination
of abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354;
see also Content Extraction, 776 F.3d at 1347. For example, claim 1 is
directed to collecting (including transmitting) and analyzing information
("selecting ... "; "transmitting ... "; "receiving ... "; "verifying ... ").
Independent claim 8 is a system claim reciting similar functions.
Independent claim 15 is similarly directed to collecting (including
transmitting) and analyzing information ("selecting ... "; "transmitting ... ";
"receiving ... ";"verifying ... "). See Elec. Power, 830 F.3d at 1353; see
also Content Extraction, 776 F.3d at 1347. The dependent claims are
directed to similar functions or processes, and Appellants have not shown
such claims are directed to other non-abstract functions or processes. See
claims 2-7, 9-14, and 16-20.
Appellants' assertion regarding pre-emption (App. Br. 16-17) is
unpersuasive, because "[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... \\There a patent's claims are deemed only to disclose
patent ineligible subject matter under the 1\1ayo framework, as they are in
this case, preemption concerns are fully addressed and rnade moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
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see also OIP, 788 F.3d at 1362---63 ("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").
Regarding Alice step two, contrary to Appellants' assertion (App. Br.
10-17; Reply Br. 3-7), Appellants have not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Further, contrary to Appellants' arguments (App. Br. 10-17; Reply
Br. 3-7), the claims are similar to the claims of Electric Power, because they
do not require any nonconventional computer, network, or user device
components, or even a "non-conventional and non-generic arrangement of
known, conventional pieces," but merely call for performance of the claimed
information collection and analysis functions on generic computer, network,
and user device components. See Elec. Power, 830 F.3d at 1355; see also
Content Extraction, 776 F.3d at 1348. For example, claim 1 recites
"selecting, via a processor of a computing device, ... ; transmitting, via the
processor, ... wherein the user device is capable of executing the text-to-
speech process to produce ... ; receiving, from the user device and over the
network, ... ; verifying, via the processor, ... ; and transmitting, via the
processor and over the network, .... " Claims 8 and 15 recite similar
functions or processes. The dependent claims call for similar generic
components and devices, and Appellants have not shown such claims require
any non-conventional components or devices. See claims 2-7, 9-14, and
16-20.
Similar to the claims of Electric Power, the rejected claims specify
what information is desirable to gather and analyze, but they "do not include
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any requirement for performing the claimed functions of gathering,
analyzing ... by use of anything but entirely conventional, generic
technology." Elec. Power, 830 F.3d at 1355. Therefore, similar to the
claims of Electric Power, the rejected claims "do not state an arguably
inventive concept in the realm of application of the information-based
abstract ideas." Elec. Power, 830 F.3d at 1356.
Appellants cite paragraphs and figures of the Specification (App. Br.
12-14; Reply Br. 3--4), and argue they "provide the solution and the
innovation" by "the use of text that covers a non-word." App. Br. 13.
Appellants' arguments are unpersuasive. Consistent with the
Specification, the claims recite selecting certain known information (such as
text comprising a non-word) for processing. However, Appellants have not
shown selecting different information content for processing renders the
claims patent eligible under Alice.
Contrary to Appellants' assertion (App. Br. 11-14), the rejected
claims are unlike the claims in Enfish. In Enfzsh, the court determines:
The ... patents are directed to an innovative logical model for a
computer database .... A logical model generally results in the
creation of particular tables of data, but it does not describe how
the bits and bytes of those tables are arranged in physical
memory devices. Contrary to conventional logical models, the
patented logical model includes all data entities in a single
table, with column definitions provided by rows in that same
table. The patents describe this as the "self-referential"
property of the database.
Enfzsh, 822 F.3d at 1330.
[T]he plain focus of the claims is on an improvement to
computer functionality itself, not on economic or other tasks for
which a computer is used in its ordinary capacity.
[T]he claims . . . are directed to a specific improvement to the
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way computers operate, embodied in the self-referential table.
Enfzsh, 822 F.3d at 1336.
The rejected claims are unlike the claims of Enfish because they are
not "an improvement to computer functionality itself." Enfzsh, 822 F.3d at
1336. Instead, they are similar to the claims of Electric Power, because "the
focus of the claims is not on such an improvement in computers as tools, but
on certain independently abstract ideas that use computers as tools." Elec.
Power, 830 F.3d at 1354.
Further, contrary to Appellants' assertion (App. Br. 11-14), the
rejected claims are unlike the claims in Amdocs (Israel) Limited v. Openet
Telecom, Inc., 841 F.3d 1288 (2016). In Amdocs, the court finds:
claim 1 of the '065 patent is tied to a specific structure of
various components (network devices, gatherers, ISMs, a
central event manager, a central database, a user interface
server, and terminals or clients). It is narrowly drawn to not
preempt any and all generic enhancement of data in a similar
system, and does not merely combine the components in a
generic manner, but instead purposefully arranges the
components in a distributed architecture to achieve a
technological solution to a technological problem specific to
computer networks.
. . . claim 1 of the '065 patent depends upon a specific
enhancing limitation that necessarily incorporates the
invention's distributed architecture-an architecture providing
a technological solution to a technological problem. This
provides the requisite 'something more' than the performance
of "well-understood, routine, [and] conventional activities
previously known to the industry."
Amdocs, 841 F.3d at 1301 (emphases added).
The rejected claims are unlike the claims of Amdocs because they do
not "necessarily incorporate[] the invention's distributed architecture-an
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Application 14/337,332
architecture providing a technological solution to a technological problem."
Amdocs, 841 F.3d at 1301. As discussed above, the recited claims merely
select different information content for processing.
Finally, Appellants cite Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 10-14), but
do not persuasively explain why that case is similar to the present case. As
discussed above, the rejected claims are similar to the claims of Electric
Power, and they do not "require an arguably inventive distribution of
functionality within a network, thus distinguishing the claims at issue from
those in Bascom[.]" Elec. Power, 830 F.3d at 1355; see also Bascom
Global Internet Services, 827 F.3d at 1350 (construed in favor of the
nonmovant at pleading stage, finding a sufficient inventive concept in "the
installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user").
Similar to the claims of Electric Power, the rejected claims specify what
information is desirable to analyze and gather, but they "do not include any
requirement for performing the claimed functions of gathering, analyzing, ..
. by use of anything but entirely conventional, generic technology." Elec.
Power, 830 F.3d at 1356. Therefore, similar to the claims of Electric Power,
the rejected claims "do not state an arguably inventive concept in the realm
of application of the information-based abstract ideas." Elec. Power, 830
F.3d at 1356.
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer and
network technology for collecting and analyzing the desired information.
See Elec. Power, 830 F.3d at 1354. Such invocations of computers and
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networks are "insufficient to pass the test of an inventive concept in the
application" of an abstract idea. See Elec. Power, 830 F.3d at 1355.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1-20 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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