Grammarly, Inc.

Patent Trials and Appeals Board

Oct 1, 2020

15143982 - (D) (P.T.A.B. Oct. 1, 2020)

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.
15/143,982 05/02/2016 Bradley Hoover APLN-0002-U02-C01-C01 1834
87084 7590 10/01/2020
GTC Law Group PC & Affiliates
One University Ave., Ste. 302B
Westwood, MA 02090
EXAMINER
AZAD, ABUL K
ART UNIT PAPER NUMBER
2656
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
USPATENTS@gtclawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRADLEY HOOVER, MAKSYM LYTVYN,
and OLEKSIY SHEVCHENKO
_____________

Appeal 2019-003336
Application 15/143,982
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Grammarly, Inc. as the real party in
interest. Appeal Br. 2.
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Application 15/143,982

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STATEMENT OF THE CASE
Introduction
The application is directed to “methods and systems of grammar
checking comprising a grammar checking facility for analyzing, in a cloud
computing environment, a source-supplied text.” Abstract. Claims 1–20 are
pending; claims 1, 7, and 13 are independent. Appeal Br. 8–12. Claim 1 is
reproduced below for reference (emphases and some formatting added):
1. A system of grammar checking, comprising:
a grammar checking facility for analyzing a computer-
based text for grammatical errors,
wherein the grammar checking facility is adapted to
identify and correct grammatical errors based on at least one
grammatical rule from a plurality of grammatical rules
corresponding to the identified grammatical error,
wherein the plurality of grammatical rules are stored in the
grammar checking facility,
wherein the grammar checking facility is provided with
the computer-based text from a client computing device across a
network,
wherein the grammar checking facility performs an
analysis of the computer-based text to identify and correct
grammatical errors,
wherein corrections are incorporated into a corrected
computer-based text, and the grammar checking facility provides
the client computing device across the network with the
corrected computer-based text along with a customized writing
reference guide that includes an explanation of the
corresponding grammatical rule for the at least one identified
grammatical error in the computer-based text from the client
computing device,
wherein a corresponding portion of the provided
computer-based text comprising the at least one identified
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grammatical error is embedded into the explanation of the
corresponding grammatical rule.

The Examiner’s Rejection
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. Final Act. 2.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101 because the “claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.” Final Act. 2; see also Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”).
In 2019, the USPTO published revised guidance on the application of
§ 101 (“Guidance”). See, e.g., USPTO 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”);
USPTO October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019)
(“Update”), noticed at 84 Fed. Reg. 55942 (Oct. 18, 2019).
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Under Step 2A of the Guidance, the Office looks to whether the claim
recites:
(1) Prong One: any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MPEP
§§ 2106.05(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, under Step
2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is
not well-understood, routine, conventional in the field (see
MPEP § 2106.05(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, 84 Fed. Reg. at 54–56.
Appellant does not separately argue the claims. See Appeal Br. 3–7.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). We
are not persuaded the Examiner’s rejection is in error. We adopt the
Examiner’s findings and conclusions as our own, and we add the following
primarily for emphasis and clarification with respect to the Guidance.

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A. Step 2A, Prong One
Claim 1 recites a “system of grammar checking,” including various
computing components (i.e., a grammar checking facility, a client computing
device, and network). Pursuant to Step 2A, Prong One of the Guidance, we
agree with the Examiner that claim 1 recites a judicial exception. See Final
Act. 2–4, Ans. 4–5.
Particularly, claim 1 recites the limitations of:
1. a “grammar checking facility [that] is adapted to identify and correct
grammatical errors based on at least one grammatical rule from a
plurality of grammatical rules corresponding to the identified
grammatical error”;
2. “the grammar checking facility performs an analysis of the computer-
based text to identify and correct grammatical errors”;
3. “corrections are incorporated into a corrected computer-based text, and”
the grammar checking facility provides “the corrected computer-based
text along with a customized writing reference guide that includes an
explanation of the corresponding grammatical rule for the at least one
identified grammatical error”; and
4. “a corresponding portion of the provided computer-based text comprising
the at least one identified grammatical error is embedded into the
explanation of the corresponding grammatical rule.”
These limitations are intended to “provide for customized grammar
teaching” and “may be applied to text to prepare customized feedback for a
user” (Spec. ¶ 68), in which “actual text may be embedded within the
general rule so as to fully enable a user to understand grammatical errors
existing in the user-provided text.” Spec. ¶ 69. These limitations recite:
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1. teaching a user by providing instructional materials, which is an
example of “managing personal behavior or relationships or
interactions between people (including social activities, teaching, and
following rules or instructions)”; and
2. analysis of text for grammatical errors, which are examples of
performing “observation[s], evaluation[s], judgment[s], opinion[s].”
Memorandum, 84 Fed. Reg. at 52. Therefore, the claim recites both the
abstract concepts of “certain methods of organizing human activity” and
“mental processes—concepts performed in the human mind.” Id.; see Final
Act. 2–4; Ans. 4–5.
Appellant argues “the Examiner’s formulation of the allegedly
abstract idea in the present claims is at a very high level of generality
without regard to all of the claim language and without viewing the claim as
a whole” and “essentially renders the claim language all but meaningless.”
Appeal Br. 5, citing Diamond v. Diehr, 450 U.S. 175, 188 (1981), Parker v.
Flook, 437 U.S. 584, 594 (1978), and McRO Inc. v. Namco Bandai Games
America, Inc., 837 F.3d 1299 (Fed. Circ. 2016).
Appellant does not persuade us the Examiner errs in determining
claim 1 recites an abstract idea. See Final Act. 2. As discussed above, claim
1 recites particular limitations that represent abstract concepts under the
Guidance. See Memorandum, 84 Fed. Reg. at 54; Alice, 573 U.S. at 216.
Further, we do not agree that the eligibility of the claims in Diehr, Flook,
and McRO shows that Appellant’s claim 1 is patent eligible. For example, in
McRO, “[i]t is the incorporation of the claimed rules, not the use of the
computer, that “improved [the] existing technological process.” McRO, 837
F.3d at 1314. In contrast (and as discussed below with respect to Prong
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Two), the present claims do not recite a set of rules used to improve a
technical process; instead the claims use generic computing resources to
correct grammar and provide instruction to the user. See Spec. ¶¶ 68–69.
Accordingly, we conclude the claims recite a judicial exception under
Prong One of the Guidance. See Memorandum, 84 Fed Reg. at 54.

B. Step 2A, Prong Two
Appellant contends the following:

[the] claimed method provides improved and more reliable
grammar checking, and provides a way to more effectively teach
grammatical rules to the user, to enable the user to gain a better
understanding and memorization of writing principles, and to
enable more engaging learning than in the prior art.

Appeal Br. 6–7. Appellant contends that “the grammar checking facility
may synthesize customized feedback that includes both a general
grammatical rule and actual text provided by the user that is relevant to the
rule” and thus “enable[s] more engaging learning than in the prior art.”
Reply Br. 4.
We are not persuaded the Examiner’s rejection is in error pursuant to
Step 2A, Prong Two of the Guidance. See Final Act. 3, Ans. 7. The features
asserted by Appellant—such as the grammar checking facility’s customized
feedback that includes both the general rule and the user’s text—are part of
the abstract idea discussed above, and do not integrate the judicial exception
into a practical application.
Further, we agree with the Examiner that “the claims do no more than
describe a desired function outcome, without providing any limiting detail
that confines the claim to a particular solution to an identified problem.”
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Final Act. 4. That is, claim 1 broadly recites the result (corrected text along
with a customized writing reference guide), rather than sufficiently claiming
a technical means of achieving the result. See Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017)
(“The claim requires the functional results . . . but does not sufficiently
describe how to achieve these results in a non-abstract way.”).
The Examiner finds, and we agree, that the claims recite a judicial
exception relating to “grammar checking[,] along with a generic computer
that is simply used as a tool to implement the abstract idea.” Ans. 9. Here,
the claims do not change the underlying or other technology, rather the
claimed techniques process information and serve as a pedagogical tool.
The claimed additional elements—the client computing device and
network—“merely use[] a computer as a tool to perform an abstract idea” or
“do[] no more than generally link the use of a judicial exception to a
particular technological environment.” Memorandum, 84 Fed. Reg. at 55;
see Customedia Techs., LLC v. Dish Network Corp., No. 2018-2239, 2020
WL 1069742, at *3 (Fed. Cir. Mar. 6, 2020) (“We have held that it is not
enough, however, to merely improve a fundamental practice or abstract
process by invoking a computer merely as a tool.”).
Accordingly, we determine claim 1 does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. As the claim recites a judicial exception and fails to integrate the
exception into a practical application, the claim is “directed to the . . .
judicial exception.” Id. at 54.

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C. Step 2B
We are not persuaded the Examiner errs in determining that when
“viewing [the] claims as a whole” (Ans. 8), they “do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception.” Ans. 12. Rather, the additional elements—individually and in
combination—are well understood, routine, and conventional in view of the
record before us. See Figs. 1, 1A, 3–4; Spec. ¶¶ 50–51, 72–74; see also
Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”); Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378,
1385 (Fed. Cir. 2019). Thus, we conclude the elements of independent
claim 1, individually and as an ordered combination, do not provide
significantly more than the recited judicial exception.
Accordingly, we agree with the Examiner that independent claim 1 is
patent ineligible, as well as independent claims 7 and 13, and all claims
dependent therefrom. See Appeal Br. 3–7.

DECISION SUMMARY

TIME PERIOD FOR RESPONSE
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
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Application 15/143,982

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED