Emily Modde et al.Download PDFPatent Trials and Appeals BoardApr 2, 20212018008456 (P.T.A.B. Apr. 2, 2021) 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. 14/157,808 01/17/2014 Emily Modde 110697-8001.US00 4853 25096 7590 04/02/2021 PERKINS COIE LLP - SEA General PATENT-SEA P.O. BOX 1247 SEATTLE, WA 98111-1247 EXAMINER SAINT-VIL, EDDY ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 04/02/2021 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): patentprocurement@perkinscoie.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EMILY MODDE, JOSHUA RUTHNICK, JOSEPH GHAZAL, and REX ISHIBASHI ____________ Appeal 2018-008456 Application 14/157,808 Technology Center 3700 ____________ Before ANNETTE R. REIMERS, BRANDON J. WARNER, and ARTHUR M. PESLAK, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20, which are all the pending claims. Appeal Br. 6. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Originator, Inc. Appeal Br. 3. Appeal 2018-008456 Application 14/157,808 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention relates to “systems and methods for providing multi-sensory, e.g., both audible and visual, feedback during a learning experience.” Spec. ¶ 1. Claims 1, 8, and 16 are independent. Claim 1, reproduced below with letters added in brackets, is illustrative of the subject matter on appeal. 1. A computer-implemented method for providing a multisensory experience during input comprising: [(A)] displaying, on a user interface of a portable computing device, multiple characters associated with one or more words, wherein one or more characters of the multiple characters are displaced relative to correct positions in the one or more words; after displaying the one or more characters, [(B)] receiving, from a user via a touchscreen of the portable computing device, a selection of the one or more characters; in response to receiving the selection of the one or more characters, [(C)] animating, by a computing device, the one or more selected characters, wherein an audio clip associated with the one or more selected characters is played during the animation of the one or more selected characters; [(D)] receiving, from the user via the touchscreen, a movement of the one or more selected characters to place the one or more selected characters from a displaced position to a new position, wherein animating the selected one or more characters occurs prior to receiving the movement of the one or more selected characters; once the one or more selected characters is placed into the new position, [(E)] determining, by the computing device, that the new position corresponds to the correct position for the Appeal 2018-008456 Application 14/157,808 3 one or more characters in the one or more words displayed by the portable computing device; and following the determination that the new position corresponds to the correct position, [(F)] displaying, on the user interface, a celebration animation. REJECTION The following rejection is before us for review: Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2–6. ANALYSIS Principles of Law 35 U.S.C. § 101 An invention is patent eligible if it is a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To “distinguish[] patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts,” the Supreme Court, in Alice, reaffirmed the two-step analysis previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012). Alice, 573 U.S. at 217. The first step of the analysis considers whether a claim is directed to a Appeal 2018-008456 Application 14/157,808 4 patent-ineligible concept, e.g., an abstract idea. Id. (citing Mayo, 566 U.S. at 77). According to Supreme Court precedent, concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). The Supreme Court has also made clear that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981). In that same case, the Supreme Court cautioned 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. at 191 (citing Benson and Flook). If the claim is directed to an abstract idea, we turn to the second step of the Alice framework. The second step considers whether the claim recites an inventive concept—an element or combination of elements sufficient to ensure the claim amounts to significantly more than the abstract idea and transform the nature of the claim into a patent-eligible application. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 78, 79). “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. at 221 (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. Appeal 2018-008456 Application 14/157,808 5 USPTO Guidance In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 Revised Guidance”), 84 Fed. Reg. 50 (Jan. 7, 2019).2 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51; see also October 2019 Update supra at 1. Under the 2019 Revised Guidance and the October 2019 Update, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas, i.e., (a) mathematical concepts, (b) certain methods of organizing human activity such as a fundamental economic practice, and (c) mental processes, (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (“Step 2A, Prong Two”). 2019 Revised Guidance, 84 Fed. Reg. at 52–55. The evaluation under Step 2A, Prong Two is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a 2 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (“October 2019 Update”), https://www.uspto.gov/sites/default/files/documents/peg_oct_ 2019_update.pdf. Appeal 2018-008456 Application 14/157,808 6 practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (Section III(A)(2)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under “Step 2B,” to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 52–56. Present Claims Appellant presents argument against the rejection of claims 1–20 together as a group. See Appeal Br. 7–17; Reply Br. 3–9. We select independent claim 1 as the representative claim to decide the appeal of the rejection of these claims, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). In rejecting the pending claims under 35 U.S.C. § 101, with a focus on representative claim 1, the Examiner determined that the claim is directed to a judicial exception in the form of an abstract idea, noting that the claim is directed to providing a multisensory experience in the context of teaching (a certain method of organizing human activity) and has been a fundamental practice of human instruction, analogizing the claim to methods determined to be ineligible in the cases of Classen (Classen Immunotherapies, Inc. v. Appeal 2018-008456 Application 14/157,808 7 Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)) and CyberSource (CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)). Final Act. 3–4. The Examiner further determined that the claim does not include additional elements that are sufficient to amount to “significantly more” than the abstract idea itself. Id. at 4–6. The 2019 Revised Guidance “extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes” the following three groupings: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 52. Under the 2019 Revised Guidance, in determining whether a claim is patent eligible, we first look to whether the claim recites a judicial exception, including one of the enumerated groupings of abstract ideas (“Step 2A, Prong One”). Id. at 54. If so, we next consider whether the claim includes additional elements, beyond the judicial exception, “that integrate the [judicial] exception into a practical application,” i.e., apply, rely on, or use the judicial exception in a manner 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. (“Step 2A, Prong Two”). Id. at 54–55. Only if the 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 “[a]dds a specific limitation or combination of limitations” that is not “well-understood, routine, conventional activity in the field” or simply “appends well-understood, routine, conventional activities Appeal 2018-008456 Application 14/157,808 8 previously known to the industry, specified at a high level of generality, to the judicial exception” (“Step 2B”). Id. at 56. As an initial matter, Appellant’s argument that the ordered combination recited in claim 1 confines the claim to a particular useful application for providing online personalized education is not persuasive of error. Although particularity, i.e., preemption, may be the concern behind the judicial exceptions to statutory subject matter, preemption is not the test for eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. For this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citation omitted). Step 2A, Prong One: Recitation of a Judicial Exception (Abstract Idea) Under Step 2A, Prong One of the 2019 Revised Guidance, we consider whether claim 1 recites a judicial exception, i.e., an abstract idea, law of nature, or natural phenomenon. 2019 Revised Guidance, 84 Fed. Reg. at 54. For abstract ideas, we contemplate whether a claim limitation or combination of limitations falls within the enumerated groupings of abstract ideas set forth in the 2019 Revised Guidance. Id. Independent claim 1 includes several recitations of concepts that can be performed in the human mind. Specifically, absent the recitation of using a computing device, steps [A]–[F] are all actions that can be performed in the human mind, and have historically been done by a human teacher in the context of educating children. Concepts that can be performed in the human mind, including observation, evaluation, judgment, and opinion, are mental Appeal 2018-008456 Application 14/157,808 9 processes, which is one of the enumerated groupings of abstract ideas in the 2019 Revised Guidance. 84 Fed. Reg. at 51–52. In view of these limitations reciting mental processes, claim 1 recites an abstract idea. Furthermore, steps [A]–[F] are directed to providing a multisensory experience during input of variables in the context of teaching a child. According to the 2019 Revised Guidance, managing interactions between people, including teaching, falls within the enumerated grouping of abstract ideas for certain methods of organizing human activity. 84 Fed. Reg. at 51–52. Thus, independent claim 1 recites an abstract idea. Appellant argues that the Examiner fails to articulate the abstract idea. Appellant’s argument does not persuade us of error because independent claim 1 recites an abstract idea for the reasons above. In view of the foregoing, independent claim 1 recites a judicial exception. Step 2A, Prong Two: Integration into a Practical Application Having determined that independent claim 1 recites a judicial exception, we next consider whether the claim recites any additional elements that integrate the judicial exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 54–55. More specifically, we evaluate any additional elements, individually or in combination, to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit and set forth in MPEP §§ 2106.05(a)–(c) and (e)–(h). Id. Apart from the limitations reciting abstract ideas, which we identify above in accordance with the analysis under Step 2A, Prong One, Appeal 2018-008456 Application 14/157,808 10 independent claim 1 includes recitations of using a computing device and receiving data via a touchscreen of the computing device. Receiving and sending data, however, are extra-solution activities that are incidental to the method for providing a multisensory experience of independent claim 1. 2019 Revised Guidance, 84 Fed. Reg. at 55 n.31; MPEP § 2106.05(g) (Subsection 3). Extra-solution activity is insufficient for integration into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. The claim also recites computing components for implementing the method of providing an experience. Under the 2019 Revised Guidance, if an additional element, alone or in combination, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine, then the additional element can integrate the judicial exception in a practical application. 84 Fed. Reg. at 55. However, a general purpose computer that applies a judicial exception via generic computer functions does not qualify as a particular machine. MPEP § 2106(b) (Subsection I). Here, the computing components are recited at a high level of generality, without any meaningful detail about their structure or configuration. To the extent that Appellant asserts that the computing components enable a more robust approach for personalized education, computing components that perform tasks more quickly or accurately nonetheless fail to integrate the judicial exception into a practical application. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.), cert. denied, 136 S. Ct. 701 (2015) (“[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”). Accordingly, the recited computing components do not reflect a particular machine. Appeal 2018-008456 Application 14/157,808 11 As also set forth in the 2019 Revised Guidance, if an additional element, alone or in combination, reflects an improvement in the functioning of a computer or an improvement to another technology or technical field, then the additional element can integrate the judicial exception into a practical application. 84 Fed. Reg. at 55; MPEP § 2106(a). Appellant argues that the claimed invention is directed to an improvement in computer capabilities. Appellant similarly contends the claimed invention changes the way the computer performs by combining animation and an associated audio clip. Although the claimed invention may provide an improvement, the improvement is to personalized education. The claimed invention may improve personalized education by combining these traditional processes, but this is not an improvement in the processes themselves (it would be an improvement in the result). The claimed invention changes the way the computer operates only to the extent that it implements the improved personalized education scheme. In other words, the recited generic computing components are simply tools to implement an improved personalized education scheme that takes advantage of traditional capabilities. Thus, the recited computing components, alone and in combination, do not reflect an improvement in the functioning of a computer or an improvement to another technology or technical field. We find no indication in the Specification, nor does Appellant direct us to any indication, that these additional elements implement the abstract idea with any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform Appeal 2018-008456 Application 14/157,808 12 generic computer functions. And “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). For these reasons, independent claim 1 does not include any additional elements, considered individually and in combination, that integrate the judicial exception into a practical application. Consequently, independent claim 1, as a whole, is directed to a judicial exception. Step 2B: Well-understood, routine, and conventional As independent claim 1 recites a judicial exception and does not integrate the judicial exception into a practical application, we consider whether the claim includes any additional elements, alone or in combination, that are not well-understood, routine, conventional activity in the field. 2019 Revised Guidance, 84 Fed. Reg. at 56. Appellant argues that the ordered combination recited in claim 1 was not well-understood, routine, or conventional. According to Appellant, the prior art of record does not teach or suggest the combination of steps recited in the claim. This step of the analysis, however, considers only additional elements, as limitations reciting a judicial exception cannot supply an inventive concept. See Mayo, 566 U.S. at 72–73 (requiring “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (emphasis added)); BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear Appeal 2018-008456 Application 14/157,808 13 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.”); Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“[A]nd Berkheimer . . . leave[s] untouched the numerous cases from [the Federal Circuit] which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.).” The additional elements recited in independent claim 1, considered alone and in combination, simply append well-understood, routine, conventional activities known to the industry, specified at a high level of generality. As set forth above, the only additional elements beyond the judicial exception involve the use of a computing device with associated computing components. However, this is no more than the inclusion of generic computer components to “apply” the abstract idea, and off-the-shelf, conventional computer components can perform the functions of receiving and providing data recited in these limitations. See 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.”). Appellant cannot reasonably contend, nor does Appellant contend, that there is any genuine issue of material fact regarding whether the operation of these components is well-understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 1 require any specialized hardware or inventive computer components, or that the claimed invention is implemented using Appeal 2018-008456 Application 14/157,808 14 anything other than generic computer components to perform generic computer functions, e.g., receiving and processing information. Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been argued as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer, 890 F.3d at 1373 (Moore, J., concurring) (internal citations omitted); see also BSG Tech, 899 F.3d at 1291. Independent claim 1 also recites various computing components, which are also additional elements. As previously discussed, these computing components are recited and described at a high level of generality. Furthermore, the recited computing components do not reflect an improvement to the functioning of the computer (again, the asserted improvement is to the resultant education). Thus, independent claim 1 does not include any additional elements, alone or in combination, that represent something other than well-understood, routine, conventional activity in the field. In view of the foregoing, independent claim 1 is directed to a judicial exception without significantly more to transform the nature of the claim into a patent-eligible application. We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 1, and claims 2–20, which fall therewith. Appeal 2018-008456 Application 14/157,808 15 DECISION We AFFIRM the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. 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). CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 AFFIRMED Copy with citationCopy as parenthetical citation