Sony Corporation

Patent Trials and Appeals Board

Apr 8, 2020

15408669 - (D) (P.T.A.B. Apr. 8, 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.
15/408,669 01/18/2017 Marvin DeMerchant 201605658.01 9295
36738 7590 04/08/2020
ROGITZ & ASSOCIATES
4420 Hotel Circle Court
SUITE 230
SAN DIEGO, CA 92108
EXAMINER
JACKSON, JAKIEDA R
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
04/08/2020 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):
John@rogitz.com
Noelle@rogitz.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte MARVIN DeMARCHANT, TRACY BARNES, and
SAMEERAJAN SURESH

Appeal 2019-001426
Application 15/408,669
Technology Center 2600

Before ERIC S. FRAHM, JASON J. CHUNG, and MICHAEL T. CYGAN,
Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6, 9–11, 13, and 15–19. Appeal
Br. 13–17. The Examiner has withdrawn the rejection of claims 1–4 and 6.
Ans. 3. Therefore, only the rejection of claims 9–11, 13, and 15–19 is
before us on appeal. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sony
Corp. Appeal Br. 2.
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We AFFIRM the rejection of claims 9–11, 13, and 15–19, and enter a
NEW GROUND OF REJECTION as to claims 1–4 and 6 pursuant to our
authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claimed invention generally relates to determining whether to
change settings on a display device. Appeal Br. 2–4. Based on digitized
voice input, a word and a person are indicated. Id. at 2. A determination of
whether to change a setting on a display device is made based on
comparison of the indicated word and person to first and second criteria. Id.
at 3. Independent claim 9 is illustrative:
9. A computer- implemented method, comprising:
executing speech recognition on digitized voice input to render
a speech result indicating at least one word;
executing speaker recognition on the digitized voice input to
render a speaker result indicating at least one person;
responsive to the speech result satisfying a first criteria and the
speaker result satisfying a second criteria, establishing on the
computing device at least one setting associated with the at
least one person and otherwise not changing the at least one
setting; and
responsive to receiving a correct passcode from a correct
associated speaker at least "N" times within a time period, stop
changing settings on the computing device for a timeout period.
Appeal Br. 14–15 (Claims App.).
Independent claims 1 and 13 recite a device and an apparatus,
respectively, that contain limitations similar in scope to those in claim 9. Id.
at 13–16. Claim 1 includes further limitations of computer memory and
processor; Claim 13 includes further limitations of multi-person voice input,
additional criteria reflecting a first and second time of day, and multi-
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personalization including an icon arrangement on a home page. Id.
Dependent claims 2–4, 6, 10, 11, and 15–19 each incorporate the limitations
of their respective independent claims. Id. at 14–17. Claims 5, 7, 8, 12, and
14 have been cancelled during prosecution. Id. at 14–16.
REJECTION
Claims 9–11, 13, and 15–19 are rejected under 35 U.S.C. § 101 as
being directed to subject matter that is not eligible for patenting.
OPINION
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever 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.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
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on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
To address the growing body of precedent, the USPTO recently
published revised examination guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50
(Jan. 7, 2019) (hereinafter Revised Guidance). The Revised Guidance seeks
to improve the clarity of the subject matter eligibility analysis and improve
consistency of this analysis across the USPTO. Id.
Under the Revised Guidance, we first look to whether the claim is
directed to a judicial exception because:
(1) the claim recites a law of nature, natural phenomenon, or abstract
idea, the last of which includes certain groupings, identified as
mathematical concepts, certain methods of organizing human activity
and mental processes; and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see
MANUAL OF PATENT EXAMINATION PROCEDURE (hereinafter “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, do we then look to whether the claim:
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adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or instead,
simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance, passim.
A. Analysis
We have reviewed the Examiner’s subject matter eligibility rejection
(Final Act. 3–8; Ans. 3–11) in light of Appellant’s contentions that the
Examiner has erred (Appeal Br. 9–15; Reply Br. 2–5). We are not
persuaded by Appellant’s contention of Examiner error in rejecting claims,
9–11 and 15–19 under 35 U.S.C. § 101. We begin with claim 9.
1. “Recites an Abstract Idea”
The Examiner finds claim 9 to recite the concept of personalizing data
and recognizing speech. Final Act. 3. Specifically, the Examiner finds
claim 9 to recite “receiving speech, recognizing a speaker based on the
voice, based on results establishing a setting and once a correct password is
received, stop changing the setting for a certain person.” Ans. 4. The
Examiner has found these limitations to recite a mental process within the
abstract idea exception. Id.
Appellant argues that the Examiner is inconsistent in phrasing the
abstract idea, using “personizing data and recognizing speech” in the Final
Action, and using phrases having both more and less detail at points in the
Answer. Reply Br. 1–2. Appellant further argues that the cases cited by the
Examiner in support of finding the claims recite an abstract idea are
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dissimilar to the specific technology and claims at issue on appeal. Id. at 2–
4.
The USPTO’s 2019 Guidance states that the abstract idea exception
includes mental processes, which include “concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).” Revised
Guidance, 84 Fed. Reg. at 52. Such concepts must be capable of being
practically performed in the human mind, although the use of a physical aid,
such as a pen and paper, or a computer does not negate the mental nature of
such a concept. October 2019 Update: Subject Matter Eligibility Guidance
(hereinafter, 2019 Update) 8–9 (October 2019), available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df.
We agree with the Examiner’s determination that claim 9 recites
limitations falling within the mental process category of abstract ideas. The
limitations of claim 9 corresponding to the Examiner’s characterization are:
executing speech recognition on . . . voice input to render a
speech result indicating at least one word; executing speaker
recognition on the . . . voice input to render a speaker result
indicating at least one person; responsive to the speech result
satisfying a first criteria and the speaker result satisfying a
second criteria, establishing . . . least one setting associated
with the at least one person and otherwise not changing the at
least one setting; and responsive to receiving a correct passcode
from a correct associated speaker at least "N" times within a
time period, stop changing settings . . . for a timeout period.
Claim 9 performs the steps of identifying a word and a person based
upon characteristics of a person’s voice and spoken words, comparing the
word and person to first and second criteria, comparing the number of times
a correct passcode has been received within a time period, and determining
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settings based upon those comparisons. We agree that these steps recite the
types of observation, evaluation, and judgment that are characteristic of
mental processes that may be practically performed in the human mind.
Appellant argues that the claimed invention involves a different type
of invention that that found ineligible in the cases cited by the Examiner.
Reply Br. 2–4. We are not persuaded that such differences in the field of
endeavor lead to a conclusion that the actions identified here as mental
processes are not abstract. In lieu of a rote case-comparison approach,
USPTO Guidance synthesizes the body of precedential opinions on subject
matter eligibility to identify key concepts identified by the courts to explain
that the abstract idea exception includes certain groupings of subject matter,
including mental processes. 84 Fed. Reg. at 51–52. We further note that the
Supreme Court drew from eligibility cases involving widely different fields
of endeavor when explaining why the claimed subject matter in Alice recited
an abstract idea. See Alice, 573 U.S. at 216–220 (drawing upon “our prior
cases,” which include the different endeavors of “hedging risk,” “converting
binary-coded decimal numerals into pure binary forms,” and a “formula for
computing ‘alarm limits’ in a catalytic conversion process”). Consequently,
we agree with the Examiner that claim 9 recites an abstract idea.
a) “Directed to an Abstract Idea”
Having determined that claim 9 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the Revised Guidance, whether the
claims are directed to that abstract idea, or whether the claims have
additional elements that integrate the abstract idea into a practical
application of that abstract idea. 84 Fed. Reg. at 54.
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The Examiner finds claim 9 to have elements additional to those
limitations reciting an abstract idea; namely, a (digital) voice input and a
computing device upon which settings are changed. Ans. 5. The Examiner
further determines that the claim is directed to the above-identified abstract
idea because the additional elements are recited as performing generic
computer functions at a high level of generality, and do not improve the
functioning of a computer or any other technology. Id.
Appellant argues that the claimed invention improves computer
functionality by “providing specifically enumerated computer processing
using one input to render two outputs that are used for a specific technical
purpose . . . a two-for-one improvement in efficiency.” Reply Br. 4.
Appellant explains that the claims require that a single voice input has both a
speech result output and a speaker result output. Ans. 7.
An improvement to a technology or technical field may be indicative
that an additional element or combination of elements integrates the
exception into a practical application. 84 Fed. Reg. at 55. However, an
additional element that merely includes instructions to implement an abstract
idea on a computer, or merely uses a computer as a tool to perform an
abstract idea, may be indicative that the judicial exception is not integrated
into a practical application. Id.
The Examiner determines, and we agree, that Appellant has not shown
any improvement to a computer itself. Ans. 4. The additional element of
the computing device is described as executing instructions to gather voice
data and to compare that voice data against certain criteria towards
identifying the person associated with the voice data. Spec. 16–17. The
computer instructions themselves are not described in technological detail
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beyond the tasks they perform; for example, the execution of voice
digitization and analysis is described by reference to various techniques that
are not described beyond their names, or as boxes and decision points in the
figures. Id. at 16; Fig. 6, box 604 (“Derive fingerprint of voice as biometric
ID”); Fig. 8, box 802 (“Speech recognized?”), box 804 (“Speaker
recognized?”).
Further, claim 9 recites operations on digitized voice input, but does
not claim any step of digitization or acquisition of the voice itself. The
Federal Circuit in Digitech addressed a claim that took measured
information and produced additional information therefrom, but did not
claim the manner of taking input from a physical device. Digitech Image
Technols., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351. The court
found that, absent additional limitations, a process that “manipulate[s]
existing information to generate additional information is not patent
eligible.” Id. Appellant here relies on the creation of new data – two data
outputs for a single data input – as the improvement to technology.
However, Appellant has not explained persuasively how the alleged
improvement to computer functioning necessarily results from the
involvement of the generically recited computing device, rather than from
the mental processes themselves that the Examiner has identified as the
abstract idea.
For the above-described reasons, we are not persuaded that the
additional elements of claim 9 reflect an improvement in the functioning of a
computer, or an improvement to another technology or technical field. We
instead agree with the Examiner’s determination that the additional elements
of claim 9 are instructions to implement the particularly claimed technique
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of assembling and comparing data to make decisions on the settings on a
computer; in effect, using a generically claimed computer as a tool for that
purpose. Consequently, we are not persuaded of error in the Examiner’s
determination that claim 9 is directed to an abstract idea.
b) Significantly More Than an Abstract Idea
The Examiner has determined that the additional elements of voice
data and computing device do not amount to significantly more than the
abstract idea when considered both individually and as a combination, since
they amount to no more than a generic computer performing generic
computer functions that would be routine, conventional and well-understood
to one of ordinary skill in the computer art. Final Act. 8. The Examiner
relies on the Specification as providing recognition that the claimed
processor and computer are no more than general purpose computing
devices performing well-understood, routine, and conventional computer
functions. Final Act. 12–14 (citing Spec. ¶¶ 99–100).
Appellant alleges, without any detailed explanation, that the Examiner
has not based such a determination on a fact as required by the USPTO’s
Berkheimer memorandum. Appeal Br. 11–12; Reply Br. 2. Appellant’s
conclusory statement to this effect does not provide an explanation as why
the examiner erred on this ground of rejection, as required by 37 C.F.R.
§41.37(c)(1)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellant has not explained why the Examiner has not complied with
the eligibility analysis as described in the Berkheimer memorandum.
Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (April
19, 2018), available at https://www.uspto.gov/sites/default/files
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/documents/memo-berkheimer-20180419.PDF. The Berkheimer
memorandum provides for a “citation to an express statement in the
specification . . . that demonstrates the well-understood, routine,
conventional nature of the additional element(s).” Id. The Examiner has
cited specific portions of the Specification to support the Examiner’s
determination. Ans. 5. We agree with the Examiner’s determination that the
Specification discloses the use of well-understood, routine, conventional
computer systems. See Spec. 5–6 (“Instructions can be implemented in
software, firmware, or hardware and include any type of programmed step
undertaken by components of the system. A processor may be any
conventional general purpose single- or multi-chip processor that can
execute logic.”). Appellant has not explained persuasively why the
Examiner’s characterization of the functions of the computer and processor,
based on the description of those components in the Specification, is in
error.
Furthermore, generically claimed elements of computers and
computer databases have been found to be no more than well-understood,
routine, and conventional activity in the context of gathering and assembling
data. See, e.g., Berkheimer v. HP Inc., 890 F.3d 1369, 1370 (Fed. Cir. 2018)
(“The conventional limitations of claim 1, combined with limitations of
analyzing and comparing data and reconciling differences between the data .
. . amount to no more than performing the abstract idea of parsing and
comparing data with conventional computer components); Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 716 (updating an activity log by computer is
well-understood, routine, conventional activity). As explained by the
Supreme Court, the presence of a generic computer performing generic
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computer functions, such as calculation and transmission of data, is not
enough to transform an abstract idea into a patent-eligible invention. Alice
Corp. v. CLS Bank, 573 U.S. 208, 225–226 (2014).
Here, the processor and computer function as computational tools to
store data (pertaining to a user’s voice and speech), generate data (indicating
a person and at least one word), compare data (to respective criteria), and to
update settings). Under our governing case law, this is not enough to show
that computer causes claim 9 to be significantly more than the identified
abstract idea. Accordingly, we are not persuaded by Appellant’s argument.
In view of the foregoing, under the 2019 Guidance, informed by our
governing case law concerning 35 U.S.C. § 101, Appellant has not shown
the Examiner erred in concluding claim 9 is directed to a judicial exception,
i.e., an abstract idea, without significantly more, and thus is patent-ineligible
under § 101. We therefore sustain the Examiner’s rejection of claim 9.
Dependent claims 10 and 11 have not been argued separately, and therefore
fall with claim 9. 37 C.F.R. § 41.37(c)(1)(iv). We therefore sustain the
Examiner’s rejection of claims 9–11.
With respect to claim 13, Appellant additionally argues that the “time
of day personalization limitations . . . tailor[] a user interface with a layout
most conducive to navigational efficiency by time of day.” Reply Br. 4.
Appellant invokes Core Wireless as a similar example in which patent
eligibility resulted from “improving the speed of a user’s navigation.” Core
Wireless Licensing S.A.R.L. v. LG Electronics, Inc. 880 F.3d 1356 (Fed. Cir.
2018). Appellant further invokes Data Engine Technologies for a “highly
intuitive, user-friendly interface” that provided patent eligibility. Data
Engine Technols. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018).
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However, the decision in Core Wireless relied, in part, on a determination
that the claims recited “a specific manner of displaying a limited set of
information to the user, rather than using conventional user interface
methods to display a generic index on a computer.” Core Wireless, 880 F.3d
at 1362–1363 (specifying a particular manner by which an application
summary window is reached directly from a particular menu while one or
more applications are in an un-launched state). The eligible claims in Data
Engine Technologies require “a formula that uses the identifying character to
operate on information spread between different spreadsheet pages that are
identified by their tabs” and not merely “the idea of navigating through
spreadsheet pages using buttons or a generic method of labeling and
organizing spreadsheets.” Data Engine Technols., 906 F.3d 1008–1009.
Appellant alleges, but does not explain, how the claimed invention
functions, so as to provide a technological improvement to the computer
itself, rather than to the idea of using a time of day, in combination with the
voice inputs, to further evaluate and form an opinion on the appropriate user
settings. Accordingly, the facts before us are distinguishable from those
presented in Core Wireless and Data Engine Technologies.
In view of the foregoing, under the 2019 Guidance, informed by our
governing case law concerning 35 U.S.C. § 101, Appellant has not shown
the Examiner erred in concluding claim 13 is directed to a judicial exception,
i.e., an abstract idea, without significantly more, and thus is patent-ineligible
under § 101. We therefore sustain the Examiner’s rejection of claim 13.
Dependent claims 15–19 have not been argued separately, and therefore fall
with claim 13. 37 C.F.R. § 41.37(c)(1)(iv). We therefore sustain the
Examiner’s rejection of claims 13 and 15–19.
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With respect to claims 1–4, the Examiner has withdrawn the subject
matter eligibility rejections. Ans. 3. However, the Final Rejection and the
Answer both fail to distinguish the eligibility rejections of the un-rejected
claims 1–4 from the rejected claims 9–11, 13, and 15–19. The Final
Rejection provides an eligibility analysis that addresses the independent
claims together. Final Act. 3–7. In the Answer, that same language is
retained. See Ans. 3 (“Claim(s) 1[–]4, 6,[ ]9–11, 13, and 15–19 are directed
to the abstract idea of personalizing data and recognizing speech, as
explained in detail below.”)
Appellant has argued the independent claims as a group. See, e.g.,
Appeal Br. 5 (“Patent–Ineligibility Rejections, Claims 1–19”). Appellant
has argued against claim 1 for the same reasons as claim 13. See, e.g., id. at
6 (“a claim to a device that includes a computer memory with executable
instructions (Claim 1) or a processor with a display (Claim 13) cannot
possibly be characterized as an “abstract idea of itself” . . . [or] as being
human executable.” Appellant has used claim 1 as exemplary of the entirety
of the rejected claims. See, e.g., id. at 7 (“Taking Claim 1 as an example,”),
10 (“The present claims, however, . . ., e.g., Claim 1”).
The Examiner has not explained why the subject matter rejections
were withdrawn in the Answer. Neither the Examiner nor the Appellant
provided any indication why the subject matter eligibility of claims 1–4 is
distinguishable from that of the rejected claims 9–11, 13, and 15–19. Nor do
we discern any meaningful difference in the scope of claims 1–4 that would
provide a different result as to subject matter eligibility. We, therefore,
extend the reasoning and analysis set forth in the Final Rejection, and as
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explained supra, to make a new ground of rejection of claims 1–4 under
35 U.S.C. § 101.

CONCLUSION
For the above-described reasons, we affirm the Examiner’s rejection
of claims 9–11, 13, and 15–19 as lacking subject matter eligibility under 35
U.S.C. § 101. We enter a new ground of rejection for claims 1–4 and 6, as
lacking subject matter eligibility under 35 U.S.C. § 101.
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This section provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 41.50(f).
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Grounds Affirmed Reversed New
Ground
9–11, 13,
15–19
101 Eligibility 9–11, 13,
15–19

1–4, 6 101 Eligibility 1–4, 6
Overall
Outcome
9–11, 13,
15–19
1–4, 6

AFFIRMED; 37 C.F.R. § 41.50(b)