Jonathan Mamou et al.

Patent Trials and Appeals Board

Jan 7, 2020

14976809 - (D) (P.T.A.B. Jan. 7, 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.
14/976,809 12/21/2015 Jonathan Mamou P92430 (884.U53US1) 2867
45457 7590 01/07/2020
SCHWEGMAN LUNDBERG & WOESSNER/Intel
P.O. Box 2938
MINNEAPOLIS, MN 55402
EXAMINER
BRINICH, STEPHEN M
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
01/07/2020 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):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONATHAN MAMOU, MOSHE WASSERBLAT,
OREN PEREG, MICHAEL ASSAYAG and ORGAD KELLER
____________________

Appeal 2018-006172
Application 14/976,8091
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, JON M. JURGOVAN, and
AMBER L. HAGY, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1, 5–9, 13–17, and 21–33, constituting all pending
claims in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is Intel
Corporation. Appeal Br. 2.
2 Our Decision refers to the Specification (“Spec.”) filed December 21,
2015, the Final Office Action (“Final Act.”) mailed May 19, 2017, the
Advisory Action (“Adv. Act.”) mailed August 9, 2017, the Appeal Brief
(“Appeal Br.”) filed October 23, 2017, the Examiner’s Answer (“Ans.”)
mailed February 8, 2018, and the Reply Brief (“Reply Br.”) filed April 9,
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CLAIMED INVENTION
The claims are directed to automatic speech recognition (ASR) using
semantic word affinity. Spec. Title, Abstract. A group of the highest ranked
ASR hypotheses for words or utterances are selected from a stored list and
re-ranked using semantic coherence scoring, and the highest re-ranked
hypothesis is output. Id.
Claims 1, 9, and 17 are independent. The remaining claims are
dependent from one of these three claims. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
l. A component for semantic word affinity automatic speech
recognition (ASR), the component comprising:
a storage device to hold a ranked list of ASR hypotheses
obtained by the component;
a filter to select a set of ASR hypotheses from the list, the
set of ASR hypotheses consisting of a predefined number of
highest ranked ASR hypotheses from the list;
a processor to re-rank the set of ASR hypothesis using
semantic coherence scoring between words in the ASR
hypotheses, wherein to use semantic coherence scoring includes
the processor to apply a semantic model to words in an ASR
hypothesis to produce a respective semantic score, wherein the
semantic model comprises a set of word vectors, wherein to
apply the semantic model includes the processor to compute a
distance between word vectors of words in a hypothesis and re-
ranking the hypothesis higher when the distance is small; and
an interface to output a highest re-ranked ASR hypothesis
from the set of ASR hypotheses.

Appeal Br. 13 (Claims App’x).

2018.
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REJECTION3
(1) Claims 1, 5–9, 13–17, and 21–23 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 4–
5.

ANALYSIS
§ 101 Rejection
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[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.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the progress of science” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas, are not

3 The Appellant and Examiner are advised to consider whether the word
“conical” in paragraphs 22, 39, 55, 68, 83, 96 of the Specification, should
instead be “canonical” as in paragraph 28 of the Specification.
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patent-eligible subject matter. Thales Visionix Inc. v. United States, 850
F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (573 U.S. at 217–18). The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we “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 (internal quotation marks omitted) (quoting Mayo,
566 U.S. at 72, 79). There is no need to proceed to the second step,
however, if the first step of the Alice/Mayo test yields a determination that
the claim is directed to patent-eligible subject matter.
USPTO Step 1–Categories of Invention in 35 U.S.C. § 101
The Patent Office has recently revised its guidance for how to apply
the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance”). Step 1
of the Revised Guidance (which is unchanged from the prior guidance) is to
review the claims to determine whether they fall within one of the
enumerated categories of invention under § 101. Claims 1, 5–8 and 25–27
recite “components,” which qualify as “machines” or “manufactures” under
§ 101. Claims 9, 13–16, and 28–30 recite “methods,” which qualify as
“processes” under § 101. Claims 17, 21–24 and 31–33 recite “machine
readable media,” which qualify as “machines” or “manufactures” under
§ 101. Thus, the claims satisfy Step 1 of the subject matter eligibility
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analysis, and we proceed to USPTO Step 2A, which is the first step in the
Alice/Mayo test.
In our subsequent § 101 analysis, we group all claims together and
select claim 1 as representative of the group, as the Examiner and Appellant
have done. See Final Act. 4–5; Appeal Br. 7–11; 37 C.F.R.
§ 31.47(c)(1)(iv). Accordingly, all claims stand or fall with claim 1. We
will address the claims generally where possible, but when it is helpful to
refer to explicit claim language, we will refer to claim 1 only.
USPTO Step 2A – Alice/Mayo Step 1 (Are the Claims Directed to a Judicial
Exception?)
In Step 2A of the Revised Guidance, we determine if the claims are
“directed to” a judicial exception. Step 2A of the Revised Guidance
corresponds to the first step of the Alice/Mayo test but is in part changed
from the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74618–74633 (December 16, 2014), by separating the first step
into two prongs. We address these prongs in order below.
USPTO Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?)
In Step 2A, Prong One, of the Revised Guidance we determine
whether the claims recite a judicial exception including (a) mathematical
concepts; (b) certain methods of organizing human activity; or (c) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 51–52. The Examiner
finds that the “claims [] are directed to the abstract idea of listing and
ranking of words, i.e. a collection, analysis, and display of available
information, recognized as an abstract idea in Electric Power Group, LLC v.
Alstom S.A.[, 830 F.3d 1350] (Fed. Cir. 2016).” Final Act. 4–5.
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We largely agree with the Examiner’s identification of the abstract
idea recited in the claims; specifically, the abstract idea is storing (i.e., the
claimed “holding”), processing (i.e., the claimed “selecting,” “ranking” and
“re-ranking”), and outputting a hypothesis for a word or utterance. We
determine that these steps fall in the grouping of mental processes even
though the claims recite various technical elements (“storage device,”
“filter,” “processor,” “interface,” etc.). “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.” See Revised Guidance, 84 Fed. Reg. at 52 n.14 (emphasis omitted).
Claim 1 recites (a) “a storage device to hold a ranked list of ASR
hypotheses obtained by the component;” (b) “a filter to select . . . the highest
ranked ASR hypotheses from the list;” (c) “a processor to re-rank the set of
ASR hypothesis using semantic coherence scoring between words in the
ASR hypotheses . . .;” and (d) “an interface to output a highest re-ranked
ASR hypothesis from the set of ASR hypotheses.” Although the various
functions and steps of the claims are recited as performed by technical
elements, Appellant does not argue that ranking a list of ASR hypotheses,
selecting only the highest ranked, re-ranking by semantic coherence scoring,
and outputting the highest re-ranked ASR hypothesis, cannot practically be
done in the human mind or with the aid of pencil and paper. “[W]ith the
exception of generic computer implemented [functions or] steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.” Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). The Examiner finds,
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and we agree, the recited elements such as a “storage device,” “filter,”
“processor,” “interface,” “device component,” and “semantic model” as
claimed are generic elements known in the art. See Final Act. 3–4.
Our reviewing courts have found similar claims to recite abstract
ideas. In addition to Electric Power Group cited by the Examiner, examples
of these cases include Versata Development Group, Inc. v. SAP America,
Inc., 793 F.3d 1306 (Fed. Cir. 2015) (claims directed to abstract idea of
determining price using organizational and product group hierarchies); OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015)
(claims directed to abstract idea of offer-based price optimization using test
offers with different prices); Intellectual Ventures I LLC v. Capital One
Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017) (claims directed to abstract
idea of collecting, displaying, and manipulating data); In re TLI
Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016)
(claims directed to abstract idea of classifying and storing digital images in
an organized manner). The parallels between these cases and the present
claims are evident. For example, Versata and OIP involve processing by
sorting, ranking, and selecting data (i.e., test offers or prices). Moreover, all
of these cases involve collecting, storing, processing, and outputting data in
an abstract manner. The similarities of these cases to the present one lead us
to the conclusion that the claims at issue here likewise recite activities that
can be done in the human mind or with the aid of pencil and paper.
Accordingly, we conclude the claims recite mental processes, which is a
category identified in the Revised Guidance as an abstract idea.
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We thus proceed to Step 2A, Prong Two, of the Alice/Mayo test to
determine whether the abstract idea embodied in the claims is integrated into
a practical application.
USPTO Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong Two, of the Revised Guidance, we (a) identify
whether there are any additional elements recited in the claim beyond the
judicial exception, and (b) evaluate those additional elements individually
and in combination to determine whether the claim as a whole integrates the
exception into a practical application. We discern no additional element (or
combination of elements) recited in claims that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong Two”). For example, Appellant’s claimed additional
elements (e.g., “storage device,” “filter,” “processor,” “interface,” “device
component” and “semantic model”): (1) do not improve the functioning of a
computer or other technology; (2) are not applied with any particular
machine (except for a generic computer system); (3) do not effect a
transformation of a particular article to a different state; and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See id.; MPEP §§ 2106.05(a)–(c), (e)–(h). Instead, the additional
elements are used merely to store, select, rank, re-rank, and output a
particular kind of data, with no practical application. See Final Act. 5.
Specifically, the result of Appellant’s claims is simply the output of a
particular kind of data—the highest re-ranked ASR hypothesis. The
Specification appears to regard an ASR hypothesis as a proposal or
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candidate for what a word or utterance actually is. See, e.g., Spec. ¶ 14, 17.
Appellant’s claims, however, do not recite using such a hypothesis in any
practical application, nor does the record support determining that a
hypothesis itself represents a particular word or utterance. Simply put, there
is no additional element recited in the claims that does something
meaningful with the ASR hypothesis that is output, such as to produce
printed or displayed text from it. See Spec. ¶ 26, Fig. 1. As such, the claims
may be viewed as merely storing, processing, and outputting a particular
kind of data, without actually using that data in a practical application.
“[T]he prohibition against patenting abstract ideas ‘cannot be circumvented
by’ . . . adding “insignificant post-solution activity.” Diamond v. Diehr, 450
U.S. 175, 191–192 (1981). Mere outputting the result of data processing—
the highest re-ranked ASR hypothesis—as claimed, is insignificant extra-
solution activity that fails to integrate the judicial exception into a practical
application. Likewise, the origin of the ranked list of ASR hypotheses is not
recited in the claims, and the storing of the ranked list of ASR hypotheses
thus amounts to insignificant data gathering that fails to integrate the judicial
exception into a practical application. Thus, the claims, when viewed as a
whole, recite no additional elements or combinations thereof that amount to
integration of the abstract idea recited in these claims into a practical
application.
We next proceed to Step 2B of the subject matter eligibility test,
corresponding to step two of Alice/Mayo, where we determine whether the
claims recite an inventive concept that is significantly more than the abstract
idea embodied therein.
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USPTO Step 2B—Alice/Mayo Step 2 (Do the Claims Recite an Inventive
Concept?)
We now evaluate whether the claims recite an inventive concept that
transforms the judicial exception into patentable subject matter. Under Step
2B of the Revised Guidance, an “inventive concept” can be evaluated based
on whether an additional element or combination of elements:
(1) “[a]dds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present;” or
(2) “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.”
See Revised Guidance, 84 Fed. Reg. at 56.
Versata held that claims reciting arranging, storing, retrieving, sorting,
eliminating, and determining were “conventional, routine, and well-known”
involving “the normal, basic functions of a computer.” Versata, 793 F.3d at
1335. The claims at issue in this case similarly involve storing, selecting
(essentially the same as Versata’s eliminating or determining), ranking and
re-ranking (Versata’s arranging or sorting), and outputting data, which are
well-known, routine and conventional under Versata.
Similarly, Electric Power Group held that claims that gather, analyze,
and display information using conventional and generic technology were
insufficient to constitute an inventive concept. Electric Power Group, 830
F.3d at 1356. In the present case, the claimed ranked list of ASR hypotheses
is the result of data gathering under Electric Power Group, the claimed
selecting, ranking, and re-ranking are data analysis under Electric Power
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Group, and the claimed data output is more abstract or generic than the
displaying of Electric Power Group. As noted, the claimed “storage
device,” “filter,” “processor,” “interface,” “device component” and
“semantic model” appear to be merely generic elements as they are claimed.
Appellant’s Arguments
Appellant argues that “limiting the claims to a technical means that
are ‘arguably an advance over conventional computer and network
technology,’ removes those claims from the same conclusion reached in
Electric Power.” Appeal Br. 7. We agree with Appellant to the extent that
the claimed holding (i.e., storing), selecting, ranking, re-ranking and
outputting are performed by technical elements and that these functions or
steps are carried out with a degree of particularity as claimed. These claims,
however, fall short of patent eligibility because the result of the data
processing—the highest re-ranked ASR hypothesis—is merely output and
nothing further is done with it, such as rendering it on a display or sheet of
paper as text. In addition, the origination of the ranked list of ASR
hypotheses is not recited in the claims, which makes the claims even less
patent-eligible.
Appellant argues that the claims provide “a technical solution that
improves the capabilities of the computer results in patent eligible subject
matter.” Appeal Br. 8. In support of this proposition, Appellant cites a
discussion in Electric Power Group distinguishing the Enfish case. Id.
(citing Electric Power Group, 830 F.3d at 1354 (distinguishing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016)). Appellant
argues, as in Enfish, the claimed “semantic coherence scoring based on a
word vector semantic model is a specific technological improvement over
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the art that allows a computer to more accurately process human speech than
previous ASR technologies allowed.” Appeal Br. 8. Although this claim
feature may be an improvement, it cannot be a technological one that is
practically applied when nothing is done with the result of the semantic
coherence scoring. Merely outputting a hypothesis is not sufficient to confer
patentability.
Appellant argues the claims are patent-eligible under the McRO case.
Appeal Br. 9–10; Reply Br. 2; McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016). In particular, Appellant argues “the
rejection is based on an over reductionist reading of the claims in light of the
specification specifically cautioned against by the courts.” Appeal Br. 9–10.
Appellant argues “there is no apparent support in the law for the proposition
that the way in which outputs are used is required to demonstrate that an
improvement to a computer system has occurred.” Id. We disagree with
these arguments. The case here would be similar if McRO’s claim merely
output “a final stream of morph weight sets.” See McRO, 837 F.3d at 1307–
08. But McRO’s claim concludes with a step of “applying said final stream
of morph weight sets to a sequence of animated characters to produce lip
synchronization and facial expression control of said animated characters.”
In other words, the output of data processing in McRO is “used and applied
to create desired results: a sequence of synchronized, animated characters.”
Id. at 1315. Accordingly, properly understood, McRO actually supports the
Examiner’s conclusion and demonstrates why Appellant’s claims are patent-
ineligible.
In the Advisory Action mailed August 9, 2017, as support for the
rejection, the Examiner cited to the case of Digitech Image Technologies,
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LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014).
Adv. Act. 3. Appellant argues Digitech is inapposite to the facts of this case
because “Digitech did not include technical means akin to that recited in the
present claims.” Appeal Br. 10. Appellant further argues “Digitech is
unpersuasive because it is superseded by greater guidance from the court and
is irrelevant to the claims at issue.” Id. at 11.
We agree with Appellant that Digitech’s claims lacked technical
means to perform the recited functions and steps, but adding merely generic
elements to the claims, as done here, does not result in patent-eligible
subject matter. Also, the claimed processing in Digitech resulted in a data
profile that was not used in any practical application. Likewise, Appellant’s
claims result in output of the highest re-ranked ASR hypotheses with no
practical application. Thus, Digitech actually supports our conclusion that
the claims in this case are patent-ineligible.
In the Reply Brief, Appellant presents a new argument citing the
Diehr case. Reply Br. 2–3; Diamond v. Diehr, 450 U.S. 175 (1981). New
arguments are not permitted in a reply brief absent a showing of good cause,
which has not been provided. See 37 C.F.R. § 41.41(b)(2). In any case,
even if we could consider Appellant’s untimely argument, we would remain
unpersuaded. The processing in Diehr’s claims using the Arrhenius
equation concluded with opening a mold press to allow extraction of a
molded rubber article, or removing the rubber article from an opened mold
press. Appellant’s claims recite no such practical application.
Appellant argues “the present claims represent technology that joins a
myriad of other components in a successful ASR system, the present claims
further improving the ability of these ASR systems to accurately interpret
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spoken words into text.” Reply Br. 3. Nothing in these claims, however,
requires that they improve the ability of an ASR system to accurately
interpret spoken words into text. They merely result in output of a highest
re-ranked ASR hypothesis (i.e., data). A hypothesis is merely a proposition
or candidate for what a word or utterance might be, and its output as claimed
is not used in any practical application, such as by displaying or printing text
determined from the hypothesis. Missing from Appellant’s argument is any
identification of which elements in claim 1 are additional elements beyond
the abstract idea. The analysis in the second step of Alice does not consider
whether the limitations that are part of the recited abstract idea are routine or
well-known. As the Federal Circuit has explained, patent law does not
protect abstract ideas, “no matter how groundbreaking the advance.” SAP
America, Inc. v. Investpic LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018). What
is necessary to impart patent eligibility for a claim that recites an abstract
idea is a specific limitation beyond the judicial exception that is not well-
understood, routine, and conventional.
Accordingly, we do not find Appellant’s arguments persuasive to
show the Examiner errs in the conclusion that the claims are directed to
patent-ineligible subject matter. Thus, we conclude that claims 1, 5–9, 13–
17, and 21–23 fail to recite an inventive concept sufficient to transform into
patent-eligible subject matter the recited abstract idea. We, therefore,
sustain the Examiner’s rejection of claims 1, 5–9, 13–17, and 21–23 under
35 U.S.C. § 101.

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DECISION
The Examiner’s rejections of claims 1, 5–9, 13–17, and 21–23 under
35 U.S.C. § 101 are affirmed.

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 5–9, 13–
17, and 21–
23
101 1, 5–9, 13–
17, and 21–
23

Overall
Outcome
1, 5–9, 13–
17, and 21–
23

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