Nuance Communications, Inc.

Patent Trials and Appeals Board

Dec 1, 2020

2020006488 (P.T.A.B. Dec. 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.
16/059,967 08/09/2018 Paul Vozila 119482.00197/17-0002-
US-O
5730
110776 7590 12/01/2020
Holland & Knight LLP
10 St. James Avenue
Boston, MA 02116
EXAMINER
COLEMAN, CHARLES P.
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/01/2020 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):
IP.Inbox@nuance.com
patentdocketing@hklaw.com
toni.sousa@hklaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL VOZILA, GUIDO REMI MARCEL GALLOPYN,
BRIAN W. DELANEY, NEAL SNIDER, JOEL PRAVEEN PINTO,
MIGUEL ENRIQUE RUIZ and YI ZHANG
___________

Appeal 2020-006488
Application 16/059,967
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER and
JEREMY J. CURCURI, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1, 3–8, 10–15 and
17–21 under 35 U.S.C. § 134(a). Appeal Brief 6. Claims 1, 8 and 15 are

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed March 30, 2020), the
Final Action (mailed July 11, 2019) and the Answer (mailed June 11, 2020),
for the respective details.

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Nuance Communications, Inc. as the real
party in interest. Appeal Brief 4.
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independent. Claims 2, 9, and 16 are cancelled. See Final Action 2. We
have jurisdiction under 35 U.S.C. § 6(b). We Affirm.
Introduction
According to Appellant, the claimed subject matter is directed to “a
computer-implemented method for populating medical records via semantic
frames is executed on a computing device and includes obtaining encounter
information of a patient encounter.” Specification ¶ 5.
Representative Claim3
Claim 1 is reproduced below for reference (bracketed step lettering
added):
1. A computer-implemented method for populating medical
records via semantic frames, executed on a computing device,
comprising:
[a] obtaining encounter information of a patient encounter;
[b] processing the encounter information to generate an
encounter transcript;
[c] generating at least one semantic frame based, at least
in part, upon at least one portion of the encounter transcript,
wherein the at least one semantic frame defines an abstract
meaning for the at least one portion of the encounter transcript,
wherein generating the at least one semantic frame includes
mapping a discrete portion of the at least one portion of the
encounter transcript onto the at least one semantic frame; and
[d] populating at least a portion of a medical record
associated with the patient encounter by processing the at least
one semantic frame.

3 Appellant denotes claim 1 is representative of the claimed subject matter.
See Appeal Brief 12. Accordingly, we select independent claim 1 as the
representative claim focusing on subject matter common to independent
claims 1, 8 and 15. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).

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Rejection on Appeal
Claims 1, 3–8, 10–15 and 17–21 stand rejected under 35 U.S.C. § 101
as directed to a judicial exception to patent-eligible subject matter without
significantly more. Final Action 3–4.

PRINCIPLES OF LAW
A. Section 101
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 U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. 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 Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”).
Having said that, the Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citation omitted) (citing Benson and Flook); see, e.g., id.
at 187 (“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second part
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.”
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Alice, 573 U.S. at 221 (quotation marks omitted). “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].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019)
(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 10.2019, June 2020)) (“Step 2A, Prong Two”).5

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
5 This evaluation is performed by (a) identifying whether there are any
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2019 Revised Guidance at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we 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.
2019 Revised Guidance at 52–56.
ANALYSIS
The Examiner determines claims 1, 3–8, 10–15 and 17–21 are patent
ineligible under 35 U.S.C. § 101. Final Action 3, 4; see also Alice, 573 U.S.
at 217 (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”).
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the Revised Guidance.

additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance at 54–55.
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Step 2A—Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
The Examiner determines:
The claim(s) recite(s) a series of steps of “obtaining encounter
information, processing encounter information, generating
encounter transcripts, generating sematic frames, populating
medical records,” etc. which is a method of managing personal
behavior or relationships or interactions between people
(social activities, teaching, following rules, instructions) and thus
grouped as a certain method of organizing human
interactions. Accordingly, the claims recite an abstract idea.
Final Action 3.
The Specification discloses in the Background, “clinical
documentation is the creation of medical records and documentation that
details the medical history of medical patients” wherein “traditional clinical
documentation includes various types of data, examples of which may
include but are not limited to paper-based documents and transcripts, as well
as various images and diagrams.” Specification ¶ 3. The Background
further discloses that clinical records moved from paper-based content to
digital content “where medical records and documentation were gradually
transitioned from stacks of paper geographically-dispersed across multiple
locations/institutions to consolidated and readily accessible digital content.”
Specification ¶ 4.
The Specification discloses:

[A] computer-implemented method for populating medical
records via semantic frames is executed on a computing device
and includes obtaining encounter information of a patient
encounter. The encounter information is processed to generate
an encounter transcript. At least one semantic frame is generated
based, at least in part, upon at least one portion of the encounter
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transcript, wherein the at least one semantic frame defines an
abstract meaning for the at least one portion of the encounter
transcript.
Specification ¶ 12.
Claim 1 recites a method of populating medical records via semantic
frames. Claim 1 further recites obtaining a patient’s encounter information
and generating a transcript based upon the encounter in limitations [a], [b].
Claim 1 also recites generating at least one semantic frame wherein the
semantic frame defines an abstract meaning and includes mapping a discrete
portion of the encounter transcript in limitation [c]. Claim 1 also recites
populating the patient’s medical record associated with the encounter by
processing at least one semantic frame in limitation [d].
These steps comprise “concepts performed in the human mind[6]
(including an observation, evaluation, judgment, opinion)”; thus, the claim
recites the abstract idea of “[m]ental processes.” See 2019 Revised
Guidance, Section I (Groupings of Abstract Ideas). Our reviewing court has
found claims to be directed to abstract ideas when they recited similar
subject matter. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324
(Fed. Cir. 2016) (holding that computer-implemented method for

6 “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.” 2019 Revised Guidance 52
n.14.
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“anonymous loan shopping” was an abstract idea because it could be
“performed by humans without a computer”); Versata Dev. Grp. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of
“computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible); id. at 1376
(distinguishing Research Corp. Techs. v. Microsoft Corp., 627 F.3d
859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d
1319 (Fed. Cir. 2010), as directed to inventions that “could not, as a practical
matter, be performed entirely in a human’s mind”). Therefore, we conclude
the claims recite an abstract idea pursuant to Step 2A, Prong One of the 2019
Revised Guidance.

Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception.” 2019 Revised Guidance,
Section III(A)(2). We note that a “claim that integrates a judicial exception
into a practical application will apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” 2019 Revised Guidance, Section III(A)(2).
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Appellant argues, “the specification discloses sufficient details such
that one of ordinary skill in the art would recognize that the claimed
invention as providing an improvement in the technological field of
automated dialog applications and that the claims reflect this improvement.”
Appeal Brief 16. Appellant contends, “semantic frames may be used by an
automated clinical documentation system ‘as an intermediary step between
encounter transcript 324 and medical record 236, wherein these semantic
frames may define an abstract meaning of a portion of encounter transcript
and this abstract meaning may be used when populating medical record
236.’” Appeal Brief 16 (citing Specification ¶¶ 149, 152–57, Figures 13A–
14B). Appellant deduces:
[T]hat one of ordinary skill in the art would recognize from at
least these portions of the specification that representative
independent claim 1 provides an improvement in the technical
field of automated clinical documentation systems and that
representative independent claim 1 reflects the disclosed
improvement by mapping a discrete portion of the at least one
portion of the encounter transcript onto the at least one semantic
frame and allowing at least a portion of a medical record to be
populated by processing the at least one semantic frame.
Appeal Brief 16.
Appellant provides the following example to support the postulation
that the claimed invention provides a technical improvement in the
automated clinical documentation technology:
conventional approaches to populating medical records may be
automated by independent claim 1 by mapping a discrete portion
of the at least one portion of the encounter transcript onto the at
least one semantic frame and populating at least a portion of a
medical record by processing the at least one semantic frame.
Appeal Brief 16.
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We note, “mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance Corp. v. Westlake Serv., 859 F.3d 1044,
1055 (Fed. Cir. 2017). Claim 1 implements the method on a generic
computing device. See Specification ¶ 5.
Further, we find Appellant’s claims are distinguished from those
claims that our reviewing court has found to be patent eligible by virtue of
reciting technological improvements to a computer system because claims
merely employ a generic computing device wherein there is no improvement
to the computing device itself. See, e.g., DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1249, 1257 (Fed. Cir. 2014) (holding that claims
reciting computer processor for serving “composite web page” were patent
eligible because “the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks”); Visual Memory LLC v. NVIDIA Corp., 867 F.3d
1253, 1259 (Fed. Cir. 2017) (holding that claims directed to “an improved
computer memory system” having many benefits were patent eligible); see
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)
(distinguishing between “claims are directed to an improvement to computer
functionality versus being directed to an abstract idea” or whether “the focus
of the claims is on the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.”); see also Alice, 573
U.S. at 222 (“In holding that the process was patent ineligible, we rejected
the argument that ‘implement[ing] a principle in some specific fashion’ will
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‘automatically fal[l] within the patentable subject matter of § 101.’”
(Alterations in original) (quoting Flook, 437 U.S. at 593)).
We find claim 1 does not recite any improvement to the claimed
computing device; instead claim 1 only uses the computing device to
execute the method. See Specification ¶ 5. Additionally, we detect no
additional element (or combination of elements) recited in Appellant’s
representative claim 1 that integrates the judicial exception into a practical
application. See 2019 Revised Guidance, Section III(A)(2). For example,
Appellant’s claimed additional element (e.g., computing device) does not:
(1) improve the functioning of a computer or other technology; (2) is not
applied with any particular machine (except for generic devices); (3) does
not effect a transformation of a particular article to a different state; and
(4) is 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 MPEP §§ 2106.05(a)–(c), (e)–(h).
Accordingly, in regard to claims 1, 5–8, 12–15 and 19–21, we find
Appellant’s arguments that the claimed invention improves the technical
field of automated clinical documentation systems to be unpersuasive
because the claims do not disclose improvement to a technology or technical
field. See 2019 Revised Guidance at 55; see also Appeal Brief 17.
Accordingly, we determine claims 1, 5–8, 12–15 and 19–21 do not integrate
the recited judicial exception into a practical application. See 2019 Revised
Guidance, Section III(A)(2).
Appellant further argues in regard to some of the dependent claims,
“that dependent claims 3-4, 10-11, and 17-18 recite an integration of any
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alleged judicial exception under Step 2A: Prong Two because the claims
utilize a particular machine that is integral to the claim.” Appeal Brief 17.
Appellant contends:
[T]he machine vision system (e.g., an RGB imaging system; an
infrared imaging system; an ultraviolet imaging system; a laser
imaging system; an X-ray imaging system; a SONAR imaging
system; a RADAR imaging system; or a thermal imaging
system) is not a generic computer or generic computer
component used to perform generic computer functions.
Appeal Brief 17 (citing Specification ¶ 65).
We find Appellant’s arguments unpersuasive of Examiner error. We
determine the claims recite additional elements that fail to implement the
abstract idea with a particular machine or manufacture that is integral to the
claim. For example, the additional elements (RGB imaging system, infrared
imaging system, etc.) do not populate the medical records. The additional
elements merely provide the information used to populate the medical
records via the sematic frames. Therefore, the additional elements add
insignificant extra-solution activity to the judicial exception because the
additional elements’ activity is considered to be pre-solution activity. See
MPEP § 2106.05(g).7

7 “Another consideration when determining whether a claim integrates the
judicial exception into a practical application in Step 2A Prong Two or
recites significantly more in Step 2B is whether the additional elements add
more than insignificant extra-solution activity to the judicial exception. The
term ‘extra-solution activity’ can be understood as activities incidental to the
primary process or product that are merely a nominal or tangential addition
to the claim. Extra-solution activity includes both pre-solution and post-
solution activity. An example of pre-solution activity is a step of gathering
data for use in a claimed process, e.g., a step of obtaining information about
credit card transactions, which is recited as part of a claimed process of
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We find Appellant’s argument unpersuasive of Examiner error
because dependent claims 3, 4, 10, 11, 17 and 18 fail to implement the
judicial exception with a particular machine or manufacture that is integral
to the claim. See 2019 Revised Guidance at 55. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 101 rejection of dependent claims 3, 4, 10, 11, 17
and 18.

Step 2B identified in the 2019 Revised Guidance
In Step 2B, we need to consider whether an additional element or
combination of elements “[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
“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.”
2019 Revised Guidance at 56.
Appellant argues:
Because the Examiner has not demonstrated that the
above-referenced features (i.e., “generating at least one semantic
frame based, at least in part, upon at least one portion of the
encounter transcript, wherein the at least one semantic frame
defines an abstract meaning for the at least one portion of the
encounter transcript, wherein generating the at least one semantic
frame includes mapping a discrete portion of the at least one
portion of the encounter transcript onto the at least one semantic
frame” and “populating at least a portion of a medical record
associated with the patient encounter by processing the at least

analyzing and manipulating the gathered information by a series of steps in
order to detect whether the transactions were fraudulent.” MPEP
§ 2106.05(g).
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one semantic frame”) are well-known, routine, or conventional
in the technical field of automated clinical documentation
systems under Step 2B, Applicant respectfully requests that the
rejection of claims 1, 3-8, 10-15, and 17-21 under 35 U.S.C.
§ 101 be reversed.
Appeal Brief 19–20.
In Bascom, our reviewing court found that while the claims of the
patent were directed to an abstract idea, the patentee alleged an “inventive
concept can be found in the ordered combination of the claim limitations
that transform the abstract idea of filtering content into a particular, practical
application of that abstract idea.” Bascom Global Internet Services, Inc., v.
AT&T Mobility LLC 827 F.3d 1341, 1352 (Fed. Cir. 2016). In particular, the
patent in Bascom claimed “a technology-based solution (not an abstract-
idea-based solution implemented with generic technical components in a
conventional way) to filter content on the Internet that overcomes existing
problems with other Internet filtering systems.” Bascom at 1351.
Claim 1 is distinguishable from Bascom’s inventive technology-based
solution, as claim 1 recites an abstract-idea-based solution. That is, claim 1
recites a method of populating medical forms with a generic technical
component (e.g., computing device), in a conventional way. See generally
Specification. Therefore, we are not persuaded that ordered combination of
limitations in representative claim 1 provides an inventive concept, and we
find the claims simply appends a well-understood, routine and conventional
activity to the judicial exception. See 2019 Revised Guidance at 56.
Accordingly, we conclude claims 1, 3–8, 10–15 and 17–21 are
directed to concepts performed in the human mind such as observation,
evaluation, judgment and opinion as identified in the 2019 Revised
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Guidance, and are directed to the judicial exception without significantly
more. See 2019 Revised Guidance at 52.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–8, 10–
15, 17–21
101 Eligibility 1, 3–8, 10–
15, 17–21

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). See 37 C.F.R.
§ 1.136(a)(1)(v).
AFFIRMED