David Skiba et al.

Patent Trials and Appeals Board

Aug 22, 2019

13929090 - (D) (P.T.A.B. Aug. 22, 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.
13/929,090 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.
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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
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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
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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
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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
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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
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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
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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
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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
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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.
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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.
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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
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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.
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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