Emily Modde et al.

Patent Trials and Appeals Board

Apr 2, 2021

2018008456 (P.T.A.B. Apr. 2, 2021)

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.
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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
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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
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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.
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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.
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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.
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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
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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
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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,
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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.
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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
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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
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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
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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.

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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