John S. Conti Kilmer et al.

Patent Trials and Appeals Board

Aug 25, 2020

2018008730 (P.T.A.B. Aug. 25, 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.
14/625,430 02/18/2015 John S. Conti Kilmer P9457US00 2215
168042 7590 08/25/2020
Insigne LLP
44 Canal Center Plaza
Suite 305
Alexandria, VA 22314
EXAMINER
CWERN, JONATHAN
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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):
docket@insigne.law
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN S. CONTI KILMER,
WILLIAM D’ALELIO,
JEFF HAYES, and ANDREW RAMSEY

Appeal 2018-008730
Application 14/625,430
Technology Center 3700
____________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–4 and 6–22 (i.e., all the claims on
appeal).1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to software and a method for
remote assessment of the emotional status of a patient by a psychological or

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies “Future Life, Inc.” as the real party in
interest. Appeal Br. 1.
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psychiatric therapist.” Spec. ¶ 1. Computer system claim 1 and method
claim 17 are independent. Claim 1 is illustrative of the claims on appeal and
is reproduced below:
1. A computer system, comprising:
a patient’s computer and a remotely-located therapist’s
computer;
software installed in said patient’s computer encoding
steps for execution by said patient’s computer to provide an
interactive, real-time computer-to-computer link for remote
communication between said patient’s computer and said
therapist's computer, said software comprising:
instructions for establishing two-way audio/visual
communication between said patient's computer and said
therapist's computer;
an emotional recognition algorithm including steps for
facial motion amplification correlated with changes in facial
structures and movements over time for recognizing said
patient's emotional state, and
instructions for transmitting data generated by the
emotional recognition algorithm indicating the patient’s
emotional state over said computer-to-computer link to the
therapist’s computer.
REJECTIONS2
Claims 1–4 and 6–22 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.

2 The Examiner states, “[t]he following grounds of rejection,” i.e., “[c]laims
1–4 and 6–22 rejected under 35 USC [§] 103,” “are not presented for review
on appeal because they have been withdrawn by the [E]xaminer.” Ans. 8.
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Claims 1–4 and 6–16 are rejected 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.3
ANALYSIS
The rejection of claims 1–4 and 6–22
as failing to comply with the written description requirement.
The Examiner addresses the limitation “an emotional recognition
algorithm” that is recited in both independent claims. Final Act. 2. The
Examiner finds that these limitations were “not described in the
[S]pecification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor[s] . . . had possession of the claimed invention.”
Final Act. 3. The Examiner acknowledges Appellant’s reliance on
paragraphs 44–46 of Appellant’s Specification for support, but finds that
these paragraphs “only broadly describe[] what the algorithm is intended to
achieve, without any detail of the steps of the algorithm which are performed
in order to achieve this outcome.” Final Act. 3. Indeed “[c]laiming all
[subject matter] that achieve[s] a result without defining what means will do
so is not in compliance with the description requirement; it is an attempt to
preempt the future before it has arrived.” Fiers v. Revel, 984 F. 2d 1164,
1171 (Fed. Cir. 1993). The Examiner has carried the initial burden of
pointing out why persons skilled in the art would not recognize in the
disclosure a description of the full scope of the claimed invention because
the claims so broadly encompass any and all software capable of achieving

3 The Examiner includes claim 5 in this listing, but claim 5 has been
canceled. See Amendment dated March 29, 2017.
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the results recited. Because Appellant is in the best position to apprise us of
error in the Examiner’s findings in this regard, by pointing to the
Specification or providing other evidence, the burden shifts to Appellant to
show how the Specification demonstrates Appellant was in position of the
subject matter sought to be patented. In re Wertheim, 541 F. 2d 257 (CCPA
1976) (cited at MPEP § 2163.04).
Paragraph 44 of Appellant’s Specification describes how the present
invention makes use of “facial motion amplification (FMA)” by which a
digital camera “picks up slight facial motions which allows [a] therapist to
be able to better diagnose a patient.” Spec. ¶ 44. Paragraph 45 describes
how “FMA is an imaging algorithm” that “reveal[s] how movement of facial
structures change over very small amounts of time.” Paragraph 46 addresses
therapy sessions that “capture and stor[e] real-time audio, video, and
processed data associated with algorithms for biofeedback, cross-correlation
with FMA data captured in order to achieve emotional reading.” Paragraph
46 continues stating that “[a]dditional algorithms can be applied to measure
physiological details of the patient: respiratory, heart rate, blood flow, etc.”
Appellant additionally references paragraphs 47–49 stating that these
paragraphs “further describe how the data recorded by FMA is correlated
with emotions.” Appeal Br. 9. These additional paragraphs provide
background information stating, for example, that “[m]uch research and
development has been undertaken in the past several decades” and that
Messrs. Ekman and Friesen “developed the original FACS [Facial Action
Coding System] in the 1970s.” Spec. ¶¶ 47, 48. Paragraph 49 states, “the
present invention has been developed to digitally detect facial changes over
time and correlate them with emotions from real-time video data.”
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Appellant further acknowledges “that FMA was known in the art at the time
of filing of the present application.” Reply Br. 4.
The paragraphs discussed above are the only paragraphs cited by
Appellant in Appellant’s effort do show that the Specification demonstrates
Appellant was, at the time of filing, in possession of the subject matter for
which patent protection is sought. In view of the above disclosures, we agree
with the Examiner’s assessment that these paragraphs “only broadly
describe[] what the algorithm is intended to achieve.” Final Act. 3.
Appellant, on the other hand, justifies reliance on the above paragraphs by
replicating a passage from MPEP § 2163A, which states:
where software constitutes part of a best mode of carrying out an
invention, description of such a best mode is satisfied by a
disclosure of the functions of the software. This is because,
normally, writing code for such software is within the skill of the
art, not requiring undue experimentation, once its functions have
been disclosed . . . Thus, flow charts or source code listings are
not a requirement for adequately disclosing the functions of
software.
Appeal Br. 8 (emphasis omitted). The above MPEP passage addresses “a
best mode of carrying out an invention.” Appellant seems to overlook that
this passage is preceded by the word “compare.” To be clear, MPEP § 2163,
as a whole, is directed to satisfying the written description requirement,4 and
the above passage was provided in this MPEP section as a comparison to the
requirements for satisfaction of the best mode requirement. Thus, because
the Examiner’s rejection is based on a lack of written description support,
and not a failure to convey a “best mode of carrying out an invention,”

4 MPEP § 2163 is entitled “Guidelines for the Examination of Patent
Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first
paragraph, ‘Written Description’ Requirement.”
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Appellant’s reliance on this passage is misplaced.5 See Final Act. 2–3; see
also Appeal Br. 8.
The proper legal standard to apply in this situation are discussed in
MPEP § 2161.01 which is entitled “Computer Programming, Computer
Implemented Inventions, and 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112,
First Paragraph.” Sub-section “I” thereof addresses how to determine
whether there is adequate written description support for computer-
implemented functional claim limitation. As expressed therein, “[t]he
purpose of [the written description requirement] is to ensure that the scope
of the right to exclude, as set forth in the claims, does not overreach the
scope of the inventor’s contribution to the field of art as described in the
patent Specification.” Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed.
Cir. 2000); see also Rivera v. Int’l Trade Comm’n, 857 F.3d 1315, 1319–21
(Fed. Cir. 2017) (Affirming the Commission’s findings that “the
[S]pecification did not provide the necessary written description support for
the full breadth of the asserted claims.”). We have also been provided
guidance that “[t]he description requirement of the patent statute requires a
description of an invention, not an indication of a result that one might
achieve if one made that invention.”6 Regents of the Univ. of California v.
Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997).

5 Appellant contends, “[t]he Examiner fails to comment on Appellant's
arguments as to the relevance of MPEP 2163 A, quoted at page 8 of the
Appeal Brief.” Reply Br. 3. However, we see no need for the Examiner to
do so because this quote was taken out of context as discussed above.
6 As a side-note, the Federal Circuit has explained that a specification
cannot always support expansive claim language and satisfy the
requirements of 35 U.S.C. § 112 “merely by clearly describing one
embodiment of the thing claimed” and that “the description of one method
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MPEP § 2161.01(I) states:
original claims may lack written description when the claims
define the invention in functional language specifying a desired
result but the [S]pecification does not sufficiently describe how
the function is performed or the result is achieved. For software,
this can occur when the algorithm or steps/procedure for
performing the computer function are not explained at all or are
not explained in sufficient detail (simply restating the function
recited in the claim is not necessarily sufficient). In other words,
the algorithm or steps/procedure taken to perform the function
must be described with sufficient detail so that one of ordinary
skill in the art would understand how the inventor intended the
function to be performed. See MPEP §§ 2163.02 and 2181,
subsection IV.
That is the situation we have here, i.e., Appellant is seeking approval
of claims reciting “an emotional recognition algorithm including steps for
facial recognition” but provides no example or explanation of the particular
steps or process the algorithm is to follow, or the procedure by which it is to
operate. An express listing of computer source code may not be required but
Appellant’s Specification must provide a detailed enough algorithm to
explain “how the inventor[s] intended the function to be performed.” MPEP
§ 2161.01(I). Appellant has not apprised us as to where the Specification or
Figures disclose such subject matter commensurate with the scope of this
claim limitation.

for creating a seamless DWT does not entitle the inventor . . . to claim any
and all means for achieving that objective.” LizardTech Inc. v. Earth
Resource Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005). Here,
however, Appellant does not point to even one embodiment in Appellant’s
Specification as an example of the manner or outline by which the algorithm
is to be prepared.
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We thus agree with the Examiner that, on the record before us,
Appellant’s Specification “only broadly describes what the algorithm is
intended to achieve, without any detail of the steps of the algorithm.” Final
Act. 3. Appellant’s contention that “things which are well-known to the
skilled artisan need not be disclosed in detail” is not supported by any
evidence demonstrating that, at the time of filing, writing computer code to
recognize a person’s facial movements and correlate them with a patient’s
emotional state was well-known in the art. Appeal Br. 10, 127; see also
Reply Br. 4 (“[T]hose skilled in the art were able to write the computer code
necessary to accomplish the method and product of the present claims.”).
For a skilled artisan to proceed, direction and guidance must first be
provided either in the knowledge generally available to the skilled artisan or
based on teachings from Appellant’s Specification. As noted above, the
identified passages in Appellant’s Specification explain what is to be
accomplished, but lack detail as to how it is to be achieved, e.g., what steps
for facial motion amplification are to be used in the emotional recognition
algorithm? Leaving such decisions of design and methodology for the
skilled worker to resolve is no indication that Appellant fully possessed that
which is claimed, namely, “an emotional recognition algorithm including
steps for facial motion amplification.” See Appeal Br. 11.

7 Appellant states, “the Examiner is correct that the programming code had
not yet been completed at the time of filing of the present application” but
“that writing of the code constitutes an act within the skill in the art.”
Appeal Br. 12. However, nowhere in Appellant’s Specification does
Appellant identify the steps, phases, or sequences the code is to follow.
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Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1–4 and 6–22 due to the limitation “an
emotional recognition algorithm” lacking written description support.
The rejection of claims 1–4 and 6–16
as directed to a judicial exception without significantly more
Background
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: i.e., “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)
and in Alice. See Alice, 573 U.S. at 217–18. In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’”8 Id.
(quoting Mayo, 566 U.S. at 77). This is the “significantly more” the
Examiner refers to. Final Act. 7 (“The claim(s) does/do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception.”).

8 The USPTO has published revised guidance on the application of § 101.
See USPTO’s January 7, 2019, Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), and
supplemented at 84 Fed. Reg. 55942 (Oct. 18, 2019) (“Office Guidance”).
Regarding this Office Guidance, our reviewing court stated, “the Office
Guidance is not, itself, the law of patent eligibility, does not carry the force
of law, and is not binding in our patent eligibility analysis.” In re Rudy, 956
F.3d 1379, 1383 (Fed. Cir. 2020): see also In re Zach Zunshine, No. 2020-
1254, 2020 WL 3816803, at *2 (Fed. Cir. July 8, 2020) (Addressing “the
Office Guidance, which we recently reiterated does not modify or supplant
controlling case law.”).
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Discussion
Appellant argues claims 1–4 and 6–16 (i.e., the “computer system”
claims) together. See Appeal Br. 7–9. The Examiner does not reject method
claims 17–22 under Section 101. We select claim 1 for review, with claims
2–4 and 6–16 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
(1) Does Claim 1 fall within a Statutory Category of § 101?
As an initial matter, we must first ascertain whether claim 1 recites
one of the enumerated statutory classes of subject matter that is eligible
under 35 U.S.C. § 101, namely, a process, machine, manufacture, or
composition of matter. The Examiner does not indicate or suggest that claim
1 fails to fall within one of these named categories. Accordingly, we resolve
this question in the affirmative, i.e., claim 1 does fall within a statutory
category of Section 101, namely, a machine.
(2) Is Claim 1 Directed to a Judicial Exception?
The Examiner finds claim 1 “directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea)” and more
specifically, that claim 1 is “directed to an abstract idea”—the “emotional
recognition algorithm,” And the software for establishment of a two way
communication link and transmission of data is directed to insignificant
extra-solution activity. Final Act. 7. Appellant acknowledges that the
“Alice/Mayo test” is to be followed, but “traverse[s] the Examiner’s finding
that claim 1 is only directed to an abstract idea.” Appeal Br. 5. This is
because, as per Appellant, “[c]laim 1, when considered as a whole, is
directed to a computer system” with linking, assessment, and signaling
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capabilities (via the claimed software). Appeal Br. 5. Appellant’s argument
in this regard is addressing the so-called “additional elements” of claim 1
relating to, as will be discussed below, insignificant extra-solution activity,
but this argument does not explain why the “emotional recognition
algorithm” is not the underlying subject matter to which the claim is truly
direct or why it is not an “abstract idea.” Final Act. 7; Ans. 9.
Our discussion above concerning the lack of written description
support for the claim term “emotional recognition algorithm,” lends
credence to the Examiner’s ephemeral or conceptual findings regarding the
nature of Appellant’s recited algorithm. Lacking any discussion by
Appellant to the contrary on the topic of whether or not the algorithm itself
is “abstract,” we agree with the Examiner that claim 1, as a whole, is
“directed to an abstract idea.” Final Act. 7; see also Ans. 8–9 (“[T]he
abstract idea is the emotional recognition algorithm.”). Thus, we are not
persuaded the Examiner erred in ascertaining claim 1 as being “directed to a
judicial exception.” Final Act. 7. Accordingly, we resolve this question in
the affirmative, i.e., claim 1 recites a judicial exception, which the Revised
Guidance enumerates as mathematical concepts––mathematical formulas or
equations. See Office Guidance, 84 Fed. Reg. at 52.
(3) Has the Judicial Exception/Abstract Idea Been Integrated Into A
Practical Application, and, if so, Does Claim 1 Contain an Inventive
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Concept Sufficient to Transform the Judicial Exception/Abstract Idea Into a
Patent-Eligible Application? 9
As instructed above, if a claim is “directed to” an abstract idea, we are
then informed by the Supreme Court to “examine the elements of the claim
to determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (characterized as “Mayo step two”). In the matter
before us, the Examiner finds that claim 1 does “not include additional
elements that are sufficient to amount to significantly more than the judicial
exception.” Final Act. 7. The Examiner explains that “software for
establishment of a two way communication link and transmission of data is
directed to insignificant extra-solution activity (data gathering and
transmitting).” Final Act. 7.
Appellant argues “that the Examiner's contentions lack factual
support, as is now required by Berkheimer v. HP, Inc., [890 F.3d 1369] (Fed.
Cir. 2018).” Appeal Br. 4. Appellant contends that “when considered as a
whole,” claim 1 is directed to linking, assessment and signaling via a
computer system, and provides unclaimed benefits when doing so. Appeal
Br. 5. Thus, because of the better capability of the computer system, as
compared to a therapist that might miss facial clues, Appellant contends
“that when considered as a whole, claim 1 is hardly an abstract idea.”
Appeal Br. 6. To summarize, Appellant contends that the fact that: (a)
“software is installed in the patient’s computer;” (b) “the software contain[s]

9 The Office Guidance “explains that a patent claim or patent application
claim that recites a judicial exception is not ‘directed to’ the judicial
exception if the judicial exception is integrated into a practical application of
the judicial exception.” Office Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
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an emotional recognition algorithm;” and (c) “instructions for transmitting
data generated by the emotional recognition algorithm . . . over said
computer-to-computer link to the therapist’s computer, are sufficient to
demonstrate that the claim is significantly more than merely a claim on an
ineligible concept.” Appeal Br. 6.
Appellant further emphasizes that the claim element requiring the
software installed on the patient’s computer to contain an emotional
recognition algorithm “is important because it specifies that the patient's
facial movements are assessed over a period of time, enhanced by facial
motion amplification (FMA), and correlated to the patient's emotional state.”
Appeal Br. 7. Additionally, the claim element regarding instructions for
transmitting data generated by the emotional recognition algorithm “is
important because the software enables the therapist to evaluate the patient's
emotional state in essentially real-time, enhanced by signals and/or alerts
sent over the computer-to-computer link.” Appeal Br. 7.
The Examiner, however, responds to the above arguments, premised
on guidance from Berkheimer, “that the rejection is not based upon well-
understood, routine, conventional activity rationale and thus [Berkheimer] is
not applicable to the current rejection.” Ans. 9. Instead, as per the
Examiner, “[t]he examiner has considered the claim as a whole and the
examiner appreciates the benefits provided by the intended use of the
invention.” Ans. 9. However, “the establishment of the link and the
transmission of the data is directed to insignificant extra-solution activity, as
this merely allows for the output of the emotional recognition algorithm.”
Ans. 9. In other words, “the abstract idea is the emotional recognition
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algorithm specifically, and the other steps are insignificant extra-solution
activity.” Ans. 9. As support, the Examiner states:
[t]he claims relate for example to classifying and storing digital
images in an organized manner as described in TLI
Communications, 823 F.3d at 611–12, 118 USPQ2d at 1747.
Also, collecting information, analyzing it, and displaying certain
results of the collection and analysis as described in Electric
Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1355, 119
USPQ2d 1739, 1742 (Fed. Cir. 2016).
Ans. 10.
Appellant replies that “[t]he Examiner’s response is merely to
disagree with Appellant’s arguments set forth in the Appeal Brief, without
specific comment as to Appellant’s detailed discussion as to why the claims
meet the requirements of the Alice test.” Reply Br. 2. However, from the
above analysis of the matter before us, the Examiner has followed the “Alice
test” and has focused on the lack of extra-solution activity recited in these
claims. Appellant disagrees with this assessment, but does not explain how
the remainder of claim 1 recites more than insignificant extra-solution
activity so as to warrant reversal of the Examiner’s findings. See Office
Guidance, 84 Fed. Reg. at 55 & n. 31 (additional elements that add only
insignificant extra-solution activity such as data gathering) are not sufficient
to integrate an abstract idea into a practical application).
Regardless, Appellant argues that the emotional recognition algorithm
facilitates the remote delivery of therapy by a therapist who is located
remotely from a patient. Appeal Br. 5. Therefore, the algorithm essentially
duplicates the mental processes of observation, judgment, and opinion that a
therapist would perform if present in the same room as the patient.
However, merely using a generic computer device to perform generic
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functions that replicate the mental processes of medical doctors recites an
abstract idea implemented on generic hardware and software. See
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, 954–
55 (Fed. Cir. 2014).
Given the absence of a written description of the purported advanced
functionality of the claimed algorithm, Appellant’s arguments that the
emotional recognition algorithm can identify, record, and alert a therapist’s
computer to minor facial clues that might be missed by a therapist even in a
face-to-face session is not commensurate with the scope of claim 1. Even if
the Specification describes improvements to computers or software, those
features are not recited in claim 1 and thus cannot effect an integration into a
practical application. See ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d
759, 769–70 (Fed. Cir. 2019); Ericsson, 955 F.3d 1317, 1325 (Fed. Cir.
2020) (holding that the specification must yield to the claim language when
identifying the true focus of a claim); Synopsys, 839 F.3d at 1149 (“The
§ 101 inquiry must focus on the language of the Asserted Claims
themselves.”); Accenture Glob. Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1345 (Fed. Cir. 2013) (“[T]he important inquiry for a § 101
analysis is to look to the claim.”).
As indicated above, this Alice test regarding the recitation of
additional elements, whether individually, or as an ordered combination (see
Alice, 573 U.S. at 217–18), is satisfied when the claim limitations involve
more than the performance of well-understood, routine, and conventional
activities previously known to the industry. See Berkheimer v. HP Inc., 881
F.3d 1360, 1367 (Fed. Cir. 2018); see also Revised Guidance, 84 Fed. Reg.
56 (explaining that the Alice analysis considers whether a claim adds a
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specific limitation beyond a judicial exception that is not “well-understood,
routine, conventional” activity in the field).
Individually, the additional elements recited here perform the extra-
solution activity of establishing communication between computers and
transmitting data. As an ordered combination, the additional elements
provide no more than when they are considered individually. Alice, 573
U.S. at 225. In other words, the additional elements relied upon by
Appellant (see above) recite generic computers that perform generic
functions of communicating with one another and transmitting data. They
are used as tools to implement the judicial exception. See SAP Am., 898
F.3d at 1169–70 (holding limitations of various databases and processors did
not improve computers but used already available computers and available
functions as tools to execute the claimed process).
Accordingly, and based on the record presented, we resolve the above
questions in the negative, i.e., claim 1 does not integrate the judicial
exception/abstract idea into a practical application and does not transform
the judicial exception/abstract idea into a patent-eligible application. We
determine claim 1 does not reflect an improvement in computer functions or
other technology. It does not implement the judicial exception with or on a
particular machine that is integral to the claim. It does not transform or
reduce a particular article to a different state or thing, and it does not impose
a meaningful limitation on the judicial exception. Office Guidance, 84 Fed.
Reg. at 55. For example, as recited in claim 1, the emotional recognition
algorithm merely replicates mental processes of a therapist in recognizing
and assessing changes in facial structures and movements over time.
Appeal 2018-008730
Application 14/625,430

18
Consequently, we determine that claim 1 lacks an inventive concept
sufficient to transform the abstract idea into patent eligible subject matter.
Thus, we sustain the Examiner’s rejection of claims 1–4 and 6–16 under 35
U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–22 112(a) Written Description 1–4, 6–22
1–4, 6–22 112(a) Enablement 1–4, 6–22
1–4, 6–16 101 Eligibility 1–4, 6–16
Overall
Outcome
1–4, 6–22
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)(1)(iv).

AFFIRMED