Steven Dennis. Flinn et al.

Patent Trials and Appeals Board

Aug 20, 2019

13269979 - (D) (P.T.A.B. Aug. 20, 2019)

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.
13/269,979 10/10/2011 Steven Dennis Flinn Many-09A3 1096
53928 7590 08/20/2019
MANYWORLDS, INC.
IP DEPARTMENT
5476 BRIDLE CREEK LANE
BRENHAM, TX 77833
EXAMINER
RINES, ROBERT D
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
08/20/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN DENNIS FLINN and
NAOMI FELINA MONEYPENNY
____________

Appeal 2018-003232
Application 13/269,9791
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 9–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is ManyWorlds, Inc.
(Appeal Br. 3.)
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CLAIMED SUBJECT MATTER
Appellants’ “invention relates to extending the business process
paradigm so as to make processes more explicitly adaptive over time.”
(Spec. 1, ll. 8–9.)
Claims 9 and 18 are the independent claims on appeal. Claim 9 is
illustrative. It recites:
9. A computer-implemented system, comprising one or more
processor-based devices configured to execute:
a computer-implemented usage function that accesses a
plurality of usage behaviors associated with a user interacting
with a first media instance, wherein the first media instance
comprises a first plurality of audio objects, wherein each of the
first plurality of audio objects comprises one or more songs;
an inference function that infers one or more preferences
of the user from, at least in part, the plurality of usage behaviors,
wherein the plurality of usage behaviors comprise a plurality of
non-direct feedback behaviors and wherein the inference of the
one or more preferences is based on a plurality of inference
weightings that are determined in accordance with usage
behavior priority rules; and
a media instance-generating function executed on a
processor-based device that selects and arranges a second
plurality of audio objects, wherein each of the second plurality
of audio objects comprises one or more songs, for inclusion in a
second media instance, wherein the selection and arrangement of
the second plurality of audio objects that each comprises one or
more songs are in accordance with the inference of the one or
more preferences that is based, at least in part, on the plurality of
usage behaviors.

REJECTION
Claims 9–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

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ANALYSIS
Claim 9
“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.” 35 U.S.C. § 101. Section 101, however,
“‘contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
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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.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that claim 9 is “directed to non-
statutory subject matter” because it recites “a series of abstract descriptions
of human actions, which is reasonably considered to be organizing and
reciting actions performed by human actors.” (Final Action 4–5.) In short,
the claim is “directed to abstract descriptions and/or methods of organizing
human actions and behaviors.” (Id. at 5.)
Appellants disagree and argue that “claim 9 represents an
improvement to a technological process--in particular, a recommender
system that beneficially adapts computer-based soundtracks to the
preferences of users by automatically inferring users’ preferences from
usage behaviors and then selecting and arranging audio objects comprising
songs in accordance with the inferred preferences.” (Appeal Br. 11.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The ‘directed to’ inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether
‘their character as a whole is directed to excluded subject
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matter.’ Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the “invention
relates to extending the business process paradigm so as to make processes
more explicitly adaptive over time.” (Spec. 1, ll. 8–9.) Claim 9 provides
further evidence. Claim 9 recites “[a] computer-implemented system . . .
configured to execute: a . . . usage function that accesses a plurality of usage
behaviors associated with a user interacting with . . . a first plurality of audio
objects,” “an inference function that infers one or more preferences . . .
from, at least in part, the plurality of usage behaviors,” “a media instance-
generating function . . . that selects and arranges a second plurality of audio
objects . . . in accordance with the inference.” None of the limitations recite
technological implementation details for any of the steps. Instead, they
describe functional results to be achieved by any means. In other words,
claim 9 is directed to managing personal behavior or relationships by
organizing/arranging audio objects. Thus, we agree with the Examiner that
claim 9 is directed to the abstract idea of certain methods of organizing
human activity.
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We also note that the steps of claim 9 recite observation (accessing
usage behaviors), evaluation (inferring one or more preferences), and
judgment (selecting and arranging audio objects in accordance with the
inference). Thus, in view of the above, claim 9 is also directed to the
abstract idea of mental processes.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, “impact the patentability analysis.” See
id. at 1241.
Claim 9 achieves the claimed system by obtaining information,
analyzing/evaluating information, and applying the analysis/evaluation to
additional information. However, “with respect to the use of a [computer-
implemented system] to obtain data, adjust account balances, and issue
automated instructions; all of these computer functions are ‘well-understood,
routine, conventional activit[ies]’ previously known to the industry.” Alice,
573 U.S. at 225 (quoting Mayo, 566 U.S. at 73). Moreover, claim 9 simply
recites a generic “computer-implemented system.” (See, e.g., Spec. 103,
ll. 3–28 (describing the use of generic computer components connected in a
generic arrangement).)
We do not see how the recitation of a generic “computer-implemented
system,” even in conjunction with the recited functions, “ensure[s] ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].” Alice, 573 U.S. at 221 (alterations in original) (quoting Mayo, 566
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U.S. at 77). In short, claim 9 merely uses a generic computer system as a
tool to perform the abstract idea.
Moreover, “we have treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” Elec. Power Grp., 830
F.3d at 1353. “In a similar vein, we have treated analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” Id. at 1354. Additionally, the Federal Circuit has “recognized
that merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.”
Id.
Regardless, Appellants seek to analogize claim 9 to the claims in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016). (See Appeal Br. 11; see also id. at 14.) Specifically, as set forth
above, Appellants argue that “claim 9 represents an improvement to a
technological process.” (Id.) We disagree.
Claim 9 simply uses a generic computer system to perform the
abstract ideas, i.e., certain methods of organizing human activity and mental
processes. This does not improve the computer system. In contrast, “[t]he
claimed improvement [in McRO] was to how the physical display operated
(to produce better quality images).” SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018). In other words, in McRO, data was used
to improve the technology, i.e., the display mechanism. Here, although
claim 9 recites, e.g., accessing, inferring/analyzing, and applying the
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analysis to select and arrange data, Appellants do not sufficiently explain
how these steps improve the technology. Claim 9 merely recites the
functional results to be achieved, e.g., “selects and arranges a second
plurality of audio objects.” Claim 9 does not recite “a particular way of
programming or designing the software . . . , but instead merely claim[s] the
resulting systems.” Apple, Inc., 842 F.3d at 1241.
Nonetheless, Appellants argue that “the system of claim 9 embodies a
recursive auto-learning aspect.” (Appeal Br. 11; see also id. at 13.) We do
not find this argument persuasive. Claim 9 merely infers preferences by
accessing existing data, analyzing that data, and applying the analysis.
Appellants also argue that claim 9 “does not read on, for example, a
human directly generating media instances that are in accordance with
inferences made from computer-based usage behaviors, so there is no
preemption concern with respect to a human performing the process.” (Id.
at 12.) We do not find this argument persuasive. Preemption is not a
separate test.
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
In view of the above, we agree with the Examiner that claim 9 is
directed to an abstract idea.
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Step two of the Alice framework has been described “as a search for
an ‘ “inventive concept” ’ –i.e., an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S.
at 217–18 (citing Mayo, 566 U.S. at 72–73).
Appellants argue that “features of claim 9 . . . individually, much less
in combination, were clearly not routine or conventional at the time of the
invention.” (Appeal Br. 15.) We do not find this argument persuasive.
Taking the claim elements separately, the functions performed by the
generic “computer-implemented system” are purely conventional.
Obtaining information, analyzing/evaluating information, and applying the
analysis/evaluation to additional information, are basic computer functions.
They are well-understood, routine, and conventional functions previously
known to the industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims
“do not include any requirement for performing the claimed functions of
gathering, analyzing, and displaying in real time by use of anything but
entirely conventional, generic technology. The claims therefore do not state
an arguably inventive concept . . . .”); see also In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a
possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming.”).
Considered as an ordered combination, the generic computer system
of Appellants’ claimed invention adds nothing that is not already present
when the limitations are considered separately. For example, claim 9 does
not, as discussed above, purport to improve the functioning of the computer
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system itself. Nor does it effect an improvement in any other technology or
technical field. Instead, claim 9 amounts to nothing significantly more than
an instruction to apply the abstract ideas using generic computer components
performing routine computer functions. That is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 9.

Claims 10 and 11
Claim 10 depends from claim 9 and further recites: “a computer-
implemented function that monitors a physiological response; and the
computer-implemented usage function that accesses the plurality of usage
behaviors, wherein one of the plurality of usage behaviors is the
physiological response.”
Claim 11 depends from claim 10 and further recites: “the computer-
implemented function that monitors the physiological response, wherein the
physiological response is a gesture.”
Appellants argue that the additional element of claim 10 “does not
have an analog in controlling case law in which claims were found to be
directed to non-statutory subject matter. It is submitted that monitoring
physiological responses in the context of recommender systems would not
be considered routine or conventional at the time of the invention.” (Appeal
Br. 16.) Appellants make a similar argument regarding claim 11. (Id. at 18.)
The written description portion of the Specification uses the term
“gesture” in a single location, but does not provide a definition for the term.
(See Spec. 21, ll. 11–12.) Applying a broadest reasonable interpretation to
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the claim term, we determine that the term “gesture” includes “a hand
movement that you use to control something such as a smartphone or tablet.”
(See https://www.macmillandictionary.com/us/dictionary/american/
gesture_1, def. 1.b., last visited August 15, 2019.)
In view of the above, we determine that it was routine and
conventional to monitor a gesture, i.e., a hand movement used to control
something, e.g., a mouse, in a computer-implemented system. Therefore, we
do not find Appellants’ argument persuasive.

Claims 12–17
Claims 12–17 each depend directly from claim 9. Claims 12–17
simply provide further details of the abstract ideas. For example, claim 12
recites: “the media instance-generating function that selects the second
plurality of . . . songs for inclusion in the second media instance, wherein the
selection is in accordance with an inference of a preference determined from
at least one tag associated with at least one song of the second plurality of
. . . songs.”
Appellants do not persuasively argue why such further details would
result in the claims no longer being directed to managing personal behavior
or relationships by organizing/arranging audio objects, i.e., certain methods
of organizing human activity, or no longer being directed to evaluation,
observation, and judgment, i.e., mental processes. Nor do Appellants argue
why such further details would result in the function performed by the
generic computer components at each step no longer being purely
conventional, i.e., obtaining information, analyzing/evaluating information,
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and applying the analysis/evaluation to additional information. (See Appeal
Br. 18–26.)
Moreover, “[i]t has been clear since Alice that a claimed invention’s
use of the ineligible concept to which it is directed cannot supply the
inventive concept that renders the invention ‘significantly more’ than that
ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018). In other words, “[i]f a claim’s only ‘inventive
concept’ is the application of an abstract idea using conventional and well-
understood techniques, the claim has not been transformed into a patent-
eligible application of an abstract idea.” Id. at 1290–91.
In view of the above, we do not find Appellants’ arguments
persuasive.

Claims 18–20
Independent claim 18 and dependent claims 19 and 20 contain
recitations similar to those discussed above. Appellants present similar
arguments to those discussed above. (See Appeal Br. 26–33.) For the
reasons discussed above, we similarly do not find these arguments
persuasive.

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DECISION
The Examiner’s rejection of claims 9–20 under 35 U.S.C. § 101 is
affirmed.
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