David Skiba et al.Download PDFPatent Trials and Appeals BoardAug 22, 201913929090 - (D) (P.T.A.B. Aug. 22, 2019) Copy Citation 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. 13/929,090 06/27/2013 David Skiba 4366CSM-184 4985 48500 7590 08/22/2019 SHERIDAN ROSS P.C. 1560 BROADWAY, SUITE 1200 DENVER, CO 80202 EXAMINER JACKSON, JAKIEDA R ART UNIT PAPER NUMBER 2657 NOTIFICATION DATE DELIVERY MODE 08/22/2019 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): cjacquet@sheridanross.com edocket@sheridanross.com pair_Avaya@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID SKIBA, GEORGE ERHART, LEE BECKER, and VALENTINE C. MATULA ____________ Appeal 2017-004849 Application 13/929,0901 Technology Center 2600 ____________ Before DAVID M. KOHUT, KAMRAN JIVANI, and SCOTT E. BAIN, Administrative Patent Judges. JIVANI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review, under 35 U.S.C. § 134(a), of the Examiner’s final decision rejecting claims 1–20, which are all the claims pending in the present patent application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Avaya, Inc. App. Br. 2. Appeal 2017-004849 Application 13/929,090 2 STATEMENT OF THE CASE The present application relates to a “semantic translation model system which is operable to build a structure able to handle multiple languages to answer questions in an interactive domain like, but not limited to, an automated chat session, a contact center environment, and/or one or more HTML documents.” Spec. ¶ 5. Claim 1 is illustrative of the claimed subject matter and is reproduced below: 1. A method for creating semantic translation model training, the method comprising: receiving, by a processor, an electronic communication, the electronic communication being in a first language; performing, with the processor, a semantic analysis on content of the electronic communication; determining, with the processor, from the semantic analysis of the electronic communication, that the content of the electronic communication is a question in the first language; performing, with the processor, a syntactic analysis of the content based on the first language; determining, with the processor, that an answer in a second language to the electronic communication is available in a database of question and answer pairs, wherein the database is on a network and accessible to one or more user devices; translating, with the processor, at least some of the question to the second language by applying linguistic rules of the second language to the question; and Appeal 2017-004849 Application 13/929,090 3 storing, with the processor, the translated question and the answer as a new question and answer pair in the database of question and answer pairs. The Rejections Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1–5, 7, 9–13, 15, 16, and 18–20 stand rejected under 35 U.S.C. § 103(a) over Yamasawa et al. (US 2007/0118519 A1; May 24, 2007) and Linyard et al. (US 2002/0023144 A1; Feb. 21, 2002). Claims 6, 8, 14, and 17 stand rejected under 35 U.S.C. § 103(a) over Yamasawa, Linyard, and Sarikaya et al. (US 2013/0073276 A1; Mar. 21, 2013). ANALYSIS I. Rejection of Claims 1-20 under 35 U.S.C. Section 101 A. Standard for Patent Eligibility In analyzing subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court instructs us to “first determine whether the claims at issue are directed to a patent- ineligible concept” (id. at 216-18), and in this case, the inquiry centers on whether the claims are directed to an abstract idea. The framework requires us first to consider whether the claim is “directed to one of those patent- ineligible concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Appeal 2017-004849 Application 13/929,090 4 Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). The Supreme Court describes the second step as a search for an “inventive concept,” “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 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). The Patent Office recently issued guidance regarding this framework. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide whether a claim is “directed to” an abstract idea, we evaluate whether the claim (1) recites subject matter falling within an abstract idea grouping listed in the Revised Guidance and (2) fails to integrate the recited abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea, as noted above, we then determine whether the claim recites an inventive concept. The Revised Guidance explains that when making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not well- understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry.” Revised Guidance, 84 Fed. Reg. at 56. B. Examiner’s Findings and Conclusion The Examiner rejects claims 1–20 as directed to the abstract idea of semantic translation/analysis without significantly more than the abstract idea itself. Final Act. 3. Under the first step of Alice, the Examiner finds that “the claims are directed to a patent-ineligible abstract concept of Appeal 2017-004849 Application 13/929,090 5 semantic translation.” Ans. 5. The Examiner notes that “semantic translation can be done by a human.” Id. At Alice step 2, the Examiner concludes that the remaining claim limitations do not amount to “significantly more” than the abstract idea. Final Act. 3. In the Final Rejection, the Examiner first lists examples of claim language that adds enough such that a claim as a whole amounts to “significantly more” than the abstract idea itself, and the Examiner then concludes that the claim language in this case does not fall within any of the examples. Id. In relevant part, the Examiner states: “[l]imitations that may be enough to qualify as ‘significantly more’ when recited in a claim with a judicial exception include . . . adding a specific limitation other than what is well-understood, routine and conventional in the field.” Id. The Examiner finds that the claims, other than the abstract idea, recite a generic computer structure that performs functions that are well-understood, routine, and conventional. Id. at 2; Ans. 6. Specifically, the Examiner determines: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims other than the abstract idea per se amount to no more than a recitation of a generic computer structure that serves to perform generic computer functions that are well- understood, routine, and conventional activities previously known to the pertinent industry. Id. at 2 (emphasis added); Ans. 6 (emphasis added). C. Appellants’ Contentions Regarding Alice step 1, Appellant contends that the Examiner examines only the element of semantic translation/analysis and ignores, at Appeal 2017-004849 Application 13/929,090 6 this step, all other elements of claim 1 as well as the claim elements recited in the remaining claims. Appeal Br. 13–15. Regarding Alice step 2, Appellant contends that the Examiner errs in providing a conclusory statement that the pending claims do not fall within any of the exemplary elements which the courts have found to amount to significantly more. Appeal Br. 17 (citing Final Act. 3). D. Analysis Applying the Revised Guidance, we conclude the Examiner has not sufficiently shown that the claims are directed to patent-ineligible subject matter. The analysis under 35 U.S.C. § 101 in the Final Rejection and the Examiner’s Answer do not provide to Appellants sufficient notice of the reasons for ineligibility and also fail to provide factual evidence for the Examiner’s assertion that certain claim elements were well-understood, routine, and conventional. The Revised Guidance instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The Revised Guidance identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human behavior such as fundamental economic practices, and (3) mental processes. We focus our analysis on the third grouping—mental processes. The Judicial Exception—Mental Process The Specification and exemplary claim 1 state that the invention relates to semantic translation/analysis. Spec. ¶ 5; Appeal Br. 36. The Specification further states: “Semantics is the study of meaning that focuses on the relationship between signifiers (e.g., words, phrases, signs, and Appeal 2017-004849 Application 13/929,090 7 symbols) and their meaning. Linguistic semantics is the study of meaning that is used for understanding human expression through language.” Spec. ¶ 6. In light of this disclosure of semantics, we construe the claim terms “semantic translation” and “semantic analysis”, broadly yet reasonably, to encompass an activity that can be performed by the human mind by itself or with the aid of pen and paper, and we thus find “semantic translation” and “semantic analysis” as claimed to be related to a mental process. See Intellectual Property 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.”); CyberSource Corp. v. Retail Decisions Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“[M]ethods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas— the ‘basic tools of scientific and technological work’ that are open to all.”). Accordingly, we conclude the claims recite a judicial exception of a mental process in the form of semantic translation/analysis. Integration of the Judicial Exception into a Practical Application Having determined that the claims recite a judicial exception, our analysis under Alice step 1, in light of the Revised Guidance, turns to determining whether there are “additional elements that integrate the judicial exception into a practical application.” See MPEP § 2106.05(a)–(c), (e)–(h). Our analysis under Alice “cannot simply ask whether the claims involve a patent-ineligible concept.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. May 12, 2016). Instead, the inquiry is based on whether the Appeal 2017-004849 Application 13/929,090 8 character of the claims “as a whole is directed to excluded subject matter.” Id. Appellants contend that at Alice step 1, the Examiner examines only the element of semantic translation/analysis and ignores, at this step, all other elements of claim 1 as well as the claim elements recited in the remaining claims. Appeal Br. 14–15. We agree that the Examiner’s analysis at Alice step 1 is not sufficient and thus, Appellants were left without sufficient notice of the reasons for ineligibility in order to have a fair opportunity respond to the rejection. We find that the Examiner’s characterization of the claim language glosses over several elements of the claim, and as a result, the rejection does not properly address all elements of claim 1 at Alice step 1. The Examiner’s Answer states that “[a]ll the steps of [the currently pending] claims are an abstract concept that could be performed in the human mind, or by a human using a pen and paper.” Ans. 5. Contrary to the Examiner’s finding, the claims recite elements beyond the mental processes of semantic translation/analysis. For example, claim 1 recites the step of “determining, with the processor, that an answer in a second language to the electronic communication is available in a database of question and answer pairs, wherein the database is on a network and accessible to one or more user devices.” Appeal Br. 36. Similarly, claim 7 recites, “wherein the question and answer pair are provided in an HTML document and served to a customer via a web server.” Id. at 15. These claim elements recite more than semantic translation/analysis per se. Omitting the foregoing claim limitations, the Examiner’s analysis describes claim 1 as reciting: “determining that an answer in a second Appeal 2017-004849 Application 13/929,090 9 language to the electronic communication is available in a database of question and answer pairs.” Final Act. 5. The Examiner then concludes that this step “can be done by a user making a determination whether or not a word pair is available and storing the translated questions.” Id. Further, the Examiner does not address at all the language of claim 7, yet the Examiner concludes that “[a]ll the steps of [the currently pending] claims are an abstract concept.” Ans. 5. The Examiner’s analysis does not sufficiently address how the human mind can perform the recited steps in their entirety. The analysis does not take into account, for example, the claim requirement for a database that is on a network and accessible to one or more user devices. A human mind with the aid of pen and paper could not, for example, (1) access a network and/or a database that is “accessible to one or more user devices,” as required by claim 1 (Appeal Br. 36) or (2) provide an HTML document via a web server, as required by claim 7 (Id. at 37). Similarly, implementing question and answer pairs in a network database and determining that an answer in a second language is available in said database, as recited in claim 1, captures subject matter that encompasses more narrow concepts than merely performing semantic translation/analysis. Thus, the Examiner’s determination—namely, that all the steps of the claims are an abstract concept that could be performed in the human mind— undermines the Examiner’s analysis. This generalization does not cure the deficiencies of the Final Rejection regarding the elements of the claims other than the “semantic translation.” Cf. Mortg. Grader Inc. v. First Choiuce Loans Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (finding claims were directed to an abstract idea because the steps could be performed by Appeal 2017-004849 Application 13/929,090 10 humans without a computer and recitation within the claims of computer elements, such as a database that stores data, an interface, and a computer network, to be merely generic computer components insufficient to satisfy the inventive concept requirement). A proper rejection under 35 U.S.C. § 101 would, at Alice step 1, fully address the claim elements recited in the independent claims as well as the dependent claims. The Final Rejection did not do so. We conclude that the Examiner has not shown that all the additional elements recited in the claims, considered individually and as an ordered combination, do not amount to significantly more than the performing of semantic translation/analysis. Inventive Concept We turn now to the second step of the Alice framework. Under the Revised Guidance, our analysis under Alice step 2 consists of evaluating the additional elements individually and in combination to determine whether they provide an “inventive concept” (i.e., whether the additional elements amount to significantly more than the exception itself). Revised Guidance, 84 Fed. Reg. at 56. When making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry.” Id. At Alice step 2, the Examiner finds that the claim language, other than the abstract idea, amounts to no more than a recitation of generic computer structure that serves to perform generic computer functions that are well- understood, routine, and conventional. Final Act. 2; Ans. 6. Appeal 2017-004849 Application 13/929,090 11 Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. Id. The mere fact that something is disclosed in prior art, for example, does not mean it was well- understood, routine, and conventional. Id. Here, Appellants dispute that the claim limitations other than “semantic translation” were well-understood, routine, and conventional to a skilled artisan. Compare Appeal Br. 20 (“[T]he claims recite elements other than what is well-understood, routine, conventional activity, previously engaged in by those in the field, and thus amounts to significantly more than an abstract idea.”) with Final Act. 2, and Ans. 6 (“The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims other than the abstract idea per se amount to no more than a recitation of a generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities.”). In the current record, the Examiner does not sufficiently identify the claim limitations that he or she determines to be well-understood, routine, and conventional activities. Further, the Examiner provides no evidence that they would have been so-understood. Accordingly, we conclude a prima facie case for patent-ineligibility has not been established and we reverse the rejection of claims 1–20 under 35 U.S.C. § 101 as encompassing non-statutory subject matter. Appeal 2017-004849 Application 13/929,090 12 II. Rejection of Claims 1–20 for Obviousness The Examiner rejects all claims as obvious over various combinations of Yamasawa, Linyard, and Sarikaya. Appellants contend that the Examiner errs at least because the references fail to meet the limitations of independent claims 1, 9, and 16: Appellant submits neither Yamasawa nor Linyard teaches or suggests “determining . . . an answer in a second language to the electronic communication is available in a database of question and answer pairs” as recited in the claim. Appellant submits the Examiner is taking the claim element out of context and ignoring the language of the element. No cited reference teaches “determining . . . an answer in a second language to the electronic communication is available” in any database at all. The element refers to taking a question in a first language and looking in a database of question and answer pairs for an answer in a second language to the question in the first language. Appellant submits no cited reference teaches such an element. Reply Br. 8. We are persuaded by Appellants’ argument. The Examiner does not, in the record before us, identify a teaching or suggestion to pair a first-language question and second-language answer; much less to retain such a pairing via a database. For the below reasons, the Examiner at best cites teachings to generate a question-and-answer pair and then translate the pair to another language. The Examiner finds Yamasawa and Linyard each disclose a general capability to machine-translate one language to another (Final Act. 6–7 (citing Yamasawa ¶ 24; Linyard ¶ 38)); and Linyard discloses generating, displaying, and tracking of question-and-answer pairs, whereby a question may be paired with a plurality of answers (Ans. 6 (citing ¶¶ 52–54); Final Appeal 2017-004849 Application 13/929,090 13 Act. 7 (citing ¶ 52–54)). The Examiner also finds that an artisan would combine these features “to ensure that answers are up to date.” Final Act. 7 (citing Linyard abst.). Based on the Examiner’s findings, we do not find that it would have been obvious to track a pairing (and thus create a database pairing) of a first-language question and provide a second-language answer. For example, the Examiner does not propose or articulate a reason to generate a question-and-answer pair, translate only the answer, and then track the resultant pair nor does Examiner indicate that the references, when combined with known methods, would have yielded a predictable result. And, we do not agree that Linyard’s cited “ensur[ing] that answers are up to date” would be advanced by such a resultant pairing of a first-language question and second-language answer. In sum, the Examiner’s findings do not establish that it would have been obvious to combine the references to generate a database pairing of a first-language question and second-language answer. Because the above deficiency applies to all claims (see Final Act. 6 (addressing the independent claims collectively)), we do not sustain the obviousness rejections. Appeal 2017-004849 Application 13/929,090 14 DECISION We reverse the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101. We reverse the Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a). 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). REVERSED Copy with citationCopy as parenthetical citation