Volodya Grancharov et al.

Patent Trials and Appeals Board

Feb 18, 2020

14994561 - (D) (P.T.A.B. Feb. 18, 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.
14/994,561 01/13/2016 Volodya Grancharov 1009-1687 / P35527 US3 1015
102721 7590 02/18/2020
Murphy, Bilak & Homiller/Ericsson
1255 Crescent Green
Suite 200
Cary, NC 27518
EXAMINER
PHAM, THIERRY L
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
02/18/2020 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VOLODYA GRANCHAROV and SIGURDUR SVERRISSON
____________

Appeal 2018-006655
Application 14/994,561
Technology Center 2600
____________

Before JOHN A. JEFFERY, JUSTIN BUSCH, and
LINZY T. McCARTNEY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 35 and 36, which constitute all the claims pending
in this application. Claims 1–34 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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
Telefonaktiebolaget L M Ericsson. Appeal Br. 2.
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STATEMENT OF THE CASE
Appellant’s invention encodes a parametric representation of auto-
regressive coefficients that partially represent an audio signal. To this end,
the representation’s high- and low-frequency parts are encoded separately.
See Abstract; ¶¶ 51–55; Figs. 1, 6. Claim 35 is illustrative:
35. A method of encoding a parametric spectral representation
(f) of auto-regressive coefficients (a) that partially represent an
audio signal, the method comprising:
encoding a low-frequency part (fL) of the parametric
spectral representation (f) by quantizing coefficients of the
parametric spectral representation that correspond to a low-
frequency part of the audio signal; and
encoding a high-frequency part (fH) of the parametric
spectral representation (f) by weighted averaging based on the
quantized coefficients (f L) flipped around a quantized mirroring
frequency (fm), which separates the low-frequency part from the
high-frequency part, and a frequency grid codebook obtained in
a closed-loop search procedure.

THE REJECTION
The Examiner rejected claims 35 and 36 under 35 U.S.C. § 101 as
directed to ineligible subject matter. Ans. 2–3.2

FINDINGS, CONCLUSIONS, AND CONTENTIONS
The Examiner determines that the claimed invention is directed to an
abstract idea, namely encoding a parametric representation of auto-

2 Throughout this opinion, we refer to (1) the Appeal Brief filed October 18,
2017 (supplemented December 13, 2017) (“Appeal Br.”); (2) the Examiner’s
Answer mailed April 11, 2018 (“Ans.”); and (3) the Reply Brief filed June 4,
2018 (“Reply Br.”).
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regressive coefficients that partially represent an audio signal. See Ans. 2–4.
The Examiner adds that the claims do not include elements that add
significantly more than the abstract idea, but merely recite instructions to
implement the abstract idea on a computer. See Ans. 4–5.
Appellant argues that the Examiner’s identified abstract idea merely
repeats claim 35’s preamble and ignores the detailed technical steps recited
in the claim’s body that are said to be directed to an improvement in audio
encoding technology, namely perceptual improvements and reduced
computational complexity. Appeal Br. 6–7; Reply Br. 1, 4–8. Appellant
adds that because the Examiner referred to only the claim’s preamble in
identifying the abstract idea, the limitations in the claim’s body are,
therefore, additional elements beyond the alleged abstract idea that add
significantly more to that abstract idea—additional elements that have not
been shown to be routine or well-known operations. See Appeal Br. 7.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 35 and 36 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether the recited elements—
considered individually and as an ordered combination—transform the
nature of the claims into a patent-eligible application of that abstract idea.

PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See, 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 Supreme Court’s two-step framework, described in Mayo
and Alice. Id. 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);
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 187 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 67 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; 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.”). That
said, the Supreme 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. (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
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (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.
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101. See
USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
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Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev.
08.2017, Jan. 2018)).
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:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

ANALYSIS
Claims 35 and 36: Alice/Mayo Step One
Representative independent claim 35 recites:
A method of encoding a parametric spectral representation
. . . of auto-regressive coefficients . . . that partially represent an
audio signal, the method comprising:
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encoding a low-frequency part . . . of the parametric
spectral representation . . . by quantizing coefficients of the
parametric spectral representation that correspond to a low-
frequency part of the audio signal; and
encoding a high-frequency part . . . of the parametric
spectral representation . . . by weighted averaging based on the
quantized coefficients . . . flipped around a quantized mirroring
frequency . . . , which separates the low-frequency part from the
high-frequency part, and a frequency grid codebook obtained in
a closed-loop search procedure.

As the disclosure explains, Appellant’s invention relates to audio
encoding and decoding based on efficient representation of auto-regression
(AR) coefficients. Spec. ¶ 2. As explained in the Background section, AR
analysis is commonly used in time and transform audio coding, where
different applications use AR vectors of different length. Spec. ¶ 3.
Although AR coefficients are quantized with split, multistage vector
quantization, conventional quantization schemes are not designed for the
case when AR coefficients model high frequencies and when the
quantization is operated with very limited bit-budgets that introduce large
perceptual errors. Id.
The present invention, however, provides a more efficient scheme for
AR coefficients. Spec. ¶ 4. To this end, a vector of AR coefficients are
typically obtained by first computing autocorrelations of a windowed audio
segment using equation (1), and then obtaining AR coefficients from the
associated autocorrelation sequence through the Levinson-Durbin algorithm.
Id. ¶ 25.
As shown in Figure 1, the disclosed encoding scheme encodes a low-
frequency part of a parametric spectral representation by quantizing
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elements of that representation corresponding to a low-frequency (LF) part
of audio signal. Id. ¶ 28, Fig. 1. The high-frequency (HF) part of the
parametric spectral representation, however, is encoded by weighted
averaging based on the quantized elements flipped around a quantized
mirroring frequency that separates the LF and HF parts, and a frequency grid
codebook in a closed-loop search procedure. Id.
As shown in Figure 6, reproduced below, a key aspect of the invention
involves LF and HF encoders 10 and 12.

LF and HF encoders in Appellant’s Figure 6
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As shown above, LF encoder 10 (1) splits a received Line Spectral
Frequencies (LSF) vector into LF and HF parts or subvectors (f L and f H)
and (2) forwards the LF subvector to quantizer 16 that quantizes that
subvector’s elements using scalar or vector quantization to produce a
quantized LF subvector. Id. ¶ 51. The HF and quantized LF subvectors are
then forwarded to high-frequency encoder 12 where the quantized LF
subvector is sent to quantized LF subvector flipping unit 20 to flip the
subvector’s elements around a quantized mirroring frequency according to
equation (3) in paragraph 34. Id. ¶¶ 52–53. After forwarding the flipped
elements and quantized mirroring frequency to flipped element rescaler 22,
(1) the flipped and rescaled LSFs from the flipped element rescaler and (2)
the rescaled frequency grids from frequency grid rescaler 26 are forwarded
to weighting unit 28 that performs weighted averaging according to equation
(7) in paragraph 36. Id. ¶¶ 53–55. The resulting smoothed elements and HF
subvector are then forwarded to frequency grid search unit 30 to select a
frequency grid according to equation (13) in paragraph 46, and the
corresponding index is then transmitted to the decoder. Id. ¶ 55.
Turning to claim 35, we first note that the claim recites a method and,
therefore, falls within the process category of § 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
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In the rejection, the Examiner determines that claim 35 is directed to
an abstract idea, namely encoding a parametric representation of auto-
regressive coefficients that partially represent an audio signal. See Ans. 2–5.
To determine whether a claim recites an abstract idea, we (1) identify the
claim’s specific limitations that recite an abstract idea and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely, (a) mathematical concepts3; (b) certain methods of
organizing human activity4; or (c) mental processes.5
Here, claim 35 recites no structural elements, let alone particular
structures, articles, or devices that implement the recited encoding method.
When read as a whole, all of claim 35’s recited limitations fit squarely
within at least one of the above categories of the USPTO’s guidelines, and
are directed to encoding a parametric representation of auto-regressive
coefficients that partially represent an audio signal.
First, the limitation calling for encoding an LF part of the parametric
spectral representation by quantizing its coefficients can not only be done

3 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
4 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
5 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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entirely mentally by merely thinking about this encoding and its associated
coefficient quantization or writing it down, but this encoding also involves
mathematical relationships, formulas, or equations associated with the
parametric spectral representations, its coefficients, and associated
quantization. See, e.g., Spec. ¶ 51 (noting that the LF subvector’s elements
are quantized using scalar or vector quantization to produce a quantized LF
subvector); see also In re Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989)
(“Words used in a claim operating on data to solve a problem can serve the
same purpose as a formula.”); Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (noting that analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, are essentially mental processes within the abstract idea category);
Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014) (“Without additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.”); Benson, 409 U.S. at
63 (holding ineligible claims involving a mathematical algorithm and
directed to converting binary-coded-decimal (BCD) numerals into pure
binary numerals for use with a computer); accord CyberSource, 654 F.3d at
1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
[Benson].”).
We reach this conclusion noting that it is well settled that not only is
standard encoding and decoding an abstract concept long utilized to transmit
information, encoding and decoding can also be performed entirely
mentally. See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322,
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1326 (Fed. Cir. 2017) (“Morse code, ordering food at a fast food restaurant
via a numbering system, and Paul Revere’s ‘one if by land, two if by sea’
signaling system all exemplify encoding at one end and decoding at the
other end.”); see also Return Mail, Inc. v. U.S. Postal Service, 868 F.3d
1350, 1368 (Fed. Cir. 2017) (noting encoding and decoding information are
processes that can—and have been—performed in the human mind); cf.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (noting that a recited step that constructed a map of credit card
numbers could be performed by merely writing down a list of credit card
transactions made from a particular IP address.).
That the recited coefficients partially represent an audio signal does
not change our conclusion. First, the claim does not specify how or by what
means the audio signal on which the representation is based is generated or
processed, let alone via a particular machine or device. Second, leaving
aside the fact that a signal does not fit into any statutory category under
§ 101, In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), an audio signal
could merely be that which a person hears and, upon hearing that signal, the
listener could then represent it parametrically and spectrally entirely
mentally or with pen and paper. That the recited auto-regressive coefficients
themselves are obtained from an autocorrelation sequence associated with
equation (1) and through the Levinson-Durbin algorithm only underscores
the coefficients’ mathematical derivation. See id. ¶ 25.
Therefore, given the mathematical calculations and mental processes
associated with the first encoding limitation noted above, this limitation falls
squarely within the mental processes and mathematical concepts categories
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of the agency’s guidelines and, therefore, recites an abstract idea. See
Guidance, 84 Fed. Reg. at 52.
We reach the same conclusion regarding the second encoding
limitation calling for encoding an HF part of the parametric spectral
representation by weighted averaging based on the quantized coefficients
flipped around a quantized mirroring frequency and frequency grid
codebook obtained in a closed-loop search procedure. Here again, this
encoding not only could be done entirely mentally, but it also involves
mathematical relationships, formulas, or equations associated with the
parametric spectral representations, its coefficients and associated
quantization, as well as the weighted averaging based on flipped coefficients
and a frequency grid codebook obtained in a closed-loop search procedure.
That the Specification’s paragraphs 53 to 55 explain that the subvector’s
elements are flipped around a quantized mirroring frequency according to
equation (3) in paragraph 34, and (2) weighted averaging is performed
according to equation (7) in paragraph 36 and a frequency grid according to
equation (13) in paragraph 46 only underscores the recited encoding
process’s mathematical operations based on these equations. That the
recited frequency grid codebook is obtained in a closed-loop search
procedure does not change our conclusion, for this search could also be done
entirely mentally or with pen and paper. See Spec. ¶ 43 (indicating that the
frequency grid codebook can be formed using equation (11)).
Therefore, given the mathematical calculations and mental processes
associated with the second encoding limitation noted above, this limitation
falls squarely within the mental processes and mathematical concepts
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categories of the agency’s guidelines and, therefore, recites an abstract idea.
See Guidance, 84 Fed. Reg. at 52.
When reading claim 35 as a whole, then, all limitations recite an
abstract idea, and there are no additional elements that integrate the abstract
idea into a practical application.
In reaching this conclusion, we are not persuaded that the claimed
invention improves the computer or its components’ functionality or
efficiency, or otherwise changes the way those devices function, at least in
the sense contemplated by the Federal Circuit in Enfish LLC v. Microsoft
Corporation, 822 F.3d 1327 (Fed. Cir. 2016), despite Appellant’s arguments
to the contrary (Appeal Br. 6, 12). The claimed self-referential table in
Enfish was a specific type of data structure designed to improve the way a
computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To
the extent Appellant contends that the claimed invention uses such a data
structure to improve a computer’s functionality or efficiency, or otherwise
change the way that device functions, there is no persuasive evidence on this
record to substantiate such a contention.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016) despite Appellants’ arguments to the contrary (App. Br. 6, 8).
There, the claimed process used a combined order of specific rules that
rendered information in a specific format that was applied to create a
sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
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dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here recites, at a high level of generality, encoding a parametric
representation of auto-regressive coefficients that partially represent an
audio signal. This encoding process is not only directed to mathematical and
mental processes as noted previously, but also does not improve a display
mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
Appeal Br. 6–13; Reply Br. 1, 4–8), we disagree. Even if claim 35 recited
computer components—which it does not—and assuming, without deciding,
that the claimed invention can encode a parametric representation of auto-
regressive coefficients that partially represent an audio signal faster than
doing so manually, any speed increase comes from the capabilities of
generic computer components—not the recited process itself. See
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App. 1012, 1017 (Fed. Cir.
2017) (unpublished) (“Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
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accuracy increases stemming from the ordinary capabilities of a general-
purpose computer do not materially alter the patent eligibility of the claimed
subject matter.”) (quotation marks, bracketed alteration, and citation
omitted).
That the claimed invention encodes a parametric spectral
representation of coefficients that partially represent an audio signal, without
more, does not integrate the abstract idea into a practical application, for
merely generally linking the use of an abstract idea to a particular
technological environment or field of use does not render the claimed
invention any less abstract. See Affinity Labs of Texas, LLC v. DirectTV,
LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016); accord Flook, 437 U.S. at 584,
588–90, 596–97 (holding ineligible method for updating an alarm limit on a
process variable, despite the process involving the catalytic chemical
conversion of hydrocarbons); see also Guidance, 84 Fed. Reg. at 55 (citing
MPEP § 2106.05(h)).
So, leaving aside the fact that the encoding method of claim 35 does
not recite a particular machine, let alone a computer, to implement the
process, the claim’s focus is not on improving machines or computers as
tools, but rather on certain independently abstract ideas. See FairWarning,
839 F.3d at 1095 (quotation marks and citations omitted). As with the
ineligible claimed invention in BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1284–91 (Fed. Cir. 2018), the claimed invention does not improve a
computer’s functionality or that of its associated components. See BSG, 899
F.3d at 1288 (“While the presentation of summary comparison usage
information to users improves the quality of the information added to the
database, an improvement [in] . . . the information stored by a database is
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not equivalent to an improvement in the database’s functionality.”). We
reach the same conclusion regarding the encoder of claim 36.
In short, the claimed invention does not recite additional elements that
(1) improve a computer itself; (2) improve another technology or technical
field; (3) implement the abstract idea in conjunction with a particular
machine or manufacture that is integral to the claim; (4) transform or reduce
a particular article to a different state or thing; or (5) apply or use the
abstract idea in some other meaningful way beyond generally linking the
abstract idea’s use to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a)–
(c), (e)). In short, there are no additionally recited elements that integrate
the abstract idea into a practical application when reading claims 35 and 36
as a whole.
Although the recited functions may be beneficial by encoding a
parametric representation of auto-regressive coefficients that partially
represent an audio signal, a claim for a useful or beneficial abstract idea is
still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379–80 (Fed. Cir. 2015).
That this abstract idea is reflected in the claim’s preamble as
Appellant indicates (Appeal Br. 6; Reply Br. 2) is of no consequence here,
for it is well settled that citing the preamble to distill an abstract idea is
permissible where, as here, all claim limitations are considered as a whole.
See Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1340 (Fed. Cir. 2017) (finding no error in the district court’s citing to the
preamble in reviewing whether the claims are directed to an abstract idea);
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see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1317
(Fed. Cir. 2016) (J. Reyna, dissenting) (“I see no error with the district
court’s articulation of the underlying abstract idea, which tracks the
preamble of claim 1.”).
We also find unavailing Appellant’s contention that it is allegedly
“questionable” whether the recited encoding steps can be performed
mentally as a practical matter given the amount of calculations required for
each coefficient. See Reply Br. 7, 8 n.5. Not only is this assertion—
premised on some unspecified number of calculations—speculative and
unsubstantiated, it is not commensurate with the scope of the claim whose
encoding steps are recited at a high level of generality. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (noting that mere lawyer argument and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value); see also Enzo Biochem, Inc. v. Gen-Probe, Inc.,
424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute
for evidence.”).
We, therefore, agree with the Examiner that claims 35 and 36 are
directed to an abstract idea.

Claims 35 and 36: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 35 recites no additional
elements beyond the abstract idea, let alone additional elements that provide
an inventive concept that amount to significantly more than the abstract idea
when reading claim 35 as a whole. See Alice, 573 U.S. at 221; see also
Guidance, 84 Fed. Reg. at 56. The Examiner’s reference to a “computing
device,” “computer-readable media,” and “processors” is somewhat puzzling
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given the claims lacking those particular elements. Claim 36 does, however,
recite encoders that could involve those elements to implement the
associated encoding functions. To the extent that claim 36 recites additional
elements in the form of encoder-based devices, such as computer
components, that implement the recited encoding functions, despite the
claim’s silence in this regard, such an implementation merely uses generic
computing components to implement the recited abstract idea.
In any event, to the extent that Appellant contends that the recited
limitations following the preamble (i.e., in the claim’s body), namely those
detailed above in connection with Alice step one, add significantly more than
the abstract idea to provide an inventive concept under Alice/Mayo step two
(see Appeal Br. 7; Reply Br. 2–4), these limitations are not additional
elements beyond the abstract idea, but rather are directed to the abstract idea
as noted previously. See BSG, 899 F.3d at 1290 (explaining that the
Supreme Court in Alice “only assessed whether the claim limitations other
than the invention’s use of the ineligible concept to which it was directed
were well-understood, routine and conventional”) (emphasis added); see
also Guidance, 84 Fed. Reg. at 56 (instructing that additional recited
elements should be evaluated in Alice/Mayo step two to determine whether
they (1) add specific limitations that are not well-understood, routine, and
conventional in the field, or (2) simply append well-understood, routine, and
conventional activities previously known to the industry (citing MPEP
§ 2106.05(d))).
As noted above, claim 35 recites no such additional elements, and to
the extent that the recited encoders in claim 36 recite additional elements, at
best, they constitute generic computing components whose generic
Appeal 2018-006655
Application 14/994,561

20
computing functionality is well-understood, routine, and conventional. See
Spec. ¶ 69 (describing exemplary systems that use generic computing
components); see also FairWarning, 839 F.3d at 1096 (noting that using
generic computing components like a microprocessor or user interface does
not transform an otherwise abstract idea into eligible subject matter).
In conclusion, claim 35 recites no additional elements beyond the
abstract idea, and to the extent that claim 36 recites such additional
elements, they do not add significantly more than the abstract idea to provide
an inventive concept under Alice/Mayo step two when reading the claim as a
whole. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 35 and 36.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed
35, 36 101 Eligibility 35, 36

TIME PERIOD FOR RESPONSE
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