Ex Parte Koll et al

Patent Trial and Appeal Board

Sep 21, 2012

11766784 (P.T.A.B. Sep. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DETLEF KOLL and MICHAEL FINKE1
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Appeal 2010-006120
Application 11/766,784
Technology Center 2600
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Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Multimodal Technologies, Inc., is the real party in interest.
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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-13. These claims stand rejected under 35 U.S.C.
§ 103(a) as obvious over Kobal (US 2007/0239445 A1; published Oct. 11,
2007; filed Apr. 11, 2006) in view of Au (US 2003/0191627 A1; published
Oct. 9, 2005).
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellants, and in
light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (citing In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992)).
We REVERSE.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection. We reject claim 1 under 35 U.S.C. § 101.

STATEMENT OF CASE2
Appellants’ invention relates to methods and apparatus for the
assignment of service levels, e.g., priorities, for the verification of identified
transcripts or identified portions of a transcript. (App. Br. 2-9.) In
particular, the invention identifies the transcripts or portions of the
transcript, to which a service level is to be assigned, by identifying a
semantic meaning3 within each of the transcripts or portions of the

2 Our Decision makes reference to Appellants’ Appeal Brief (“App. Br.,”
filed Oct. 23, 2009) and Reply Brief (“Reply Br.,” filed Jan. 19, 2010), and
to the Examiner’s Answer (“Ans.,” mailed Jan. 12, 2010).
3 Appellants cite to a general purpose dictionary for the definition of
“semantic”: “of, pertaining to, or arising from the different meanings of
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transcript. (Id.) The invention assigns a service level to transcripts or
portions of the transcript based on the identified semantic meaning, and the
transcript or portion of the transcript is verified according to the assigned
service level. (Id.)
Independent claim 1 is illustrative of the claimed subject matter:
1. A computer-implemented method comprising:
(A) identifying a first semantic meaning of a first portion of a
first transcript of speech;
(B) assigning a first service level to the first portion of the
transcript based on the first semantic meaning;
(C) identifying a second semantic meaning of a second portion
of the first transcript;
(D) assigning a second service level to the second portion of the
transcript based on the second semantic meaning; and
(E) verifying the transcript in accordance with the first and
second service levels.

CONTENTIONS
The Examiner finds that, with respect to independent claims 1 and 8,
Kobal discloses a computer-implemented method and apparatus for
identifying a first portion of a transcript; assigning a priority, e.g., a service
level, to that first portion of the transcript; identifying a second portion of
the transcript; assigning a priority to that second portion of the transcript;

words or other symbols.” (App. Br. 13.) Appellants assert, therefore, that
the “semantic meaning” of a portion of a transcript refers to the meanings of
words or other symbols in the portion of the transcript. For example,
Appellants asserts that the “impressions” section of a draft transcript may be
assigned a higher priority based on the semantic meaning of the word
“impressions,” which is the name of the section, or of the contents of the
“Impressions” section, or both. (App. Br. 13-14; Reply Br. 2.)
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and verifying the accuracy of the identified portions of the transcript based
on the assigned priorities. (Ans. 3-4.) The Examiner finds, however, that
Kobal “does not specifically teach that service levels are assigned based on
semantic meaning.” (Ans. 4.)
The Examiner further finds, though, that Au teaches a method of
assigning priorities based on “semantic motivations,” so that important
emergency information is not delayed in favor of unimportant mundane
information. (Id. (citing Au, ¶ [0442]).) The Examiner interprets Au’s
“semantic motivations” as necessarily encompassing Appellants’ “semantic
meanings,” and, thus, the Examiner concludes that, at the time that the
invention was made, it would have been obvious to one of ordinary skill in
the art to modify Kobal’s methods and apparatus in view of Au’s teaching to
achieve Appellants’ invention, as described in claims 1 and 8. (Ans. 6.) The
Examiner also rejects the remaining independent claims, claims 12 and 13,
based on the same application of the disclosure of Kobal and the teaching of
Au, as applied to claims 1 and 8. (Ans. 5.)
Appellants contend that Au fails to teach a method of assigning a
service level based on semantic meanings. (App. Br. 19-20.) In particular,
Appellants contend that Au describes the prioritization of semantic
motivations, not semantic meanings (App. Br. 19), and that semantic
motivations are not the same as semantic meanings (App. Br. 20).
Moreover, Appellants contend that, even if Au’s semantic motivations
provided a general teaching regarding semantic meanings, Au does not teach
assigning service levels to portions of a transcript based on the semantic
motivations. (App. Br. 19-21.) Thus, Appellants contend that Au does not
supply the limitations of the invention, as described in claims 1 and 8, which
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the Examiner acknowledges to be missing from Kobal – “neither Kobal nor
Au teaches or suggests assigning different service levels to different portions
of the transcript based on the semantic meanings of those portions, and
verifying the transcript in accordance with the assigned service levels.”
(App. Br. 20.)

ISSUE
Does Au’s description of the prioritization of “semantic motivations”
disclose or suggest the identification and use of “semantic meanings,” as
described in Appellants’ claims?

FINDINGS OF FACT
The record supports the following Findings of Fact (Fact) by a
preponderance of the evidence:
1. Au is directed to conversational methods for distributing emotionally–
verified semantic-meaning of stories across the Internet and other
similar networks. (¶ [0061].)
2. Au describes that, in a semantic classifier system, e.g., a semantic
network, system fluidity is the ability of the system to adapt.
(¶¶ [0041] and [0042].)
3. Au describes that all emotional vectors are related to changes in
fluidity and that similar emotion paths are significant regardless of the
semantic abstractions with which they are involved conversationally.
(¶ [0441]; Fig. 87.)
4. Au describes that, because “motivations are responsible . . . for
improving the fluidity of the semantic network in Au’s conversational
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methods, each motivation becomes active only when there is some
expectation that activity of the motivation will improve fluidity. . . .”
(¶ [0349].)
5. Au describes that it is necessary to prioritize semantic motivations,
“so that processor power can be correctly allocated.” (¶ [0442].)
6. Au describes that the significance of fluidity within Au’s
conversational methods provides a basis for optimizing the priority of
motivations. (¶ [0442].)
7. Au describes that, “if priorities are poorly assigned, the system may
stall important emergency motivations in favor of unimportant
mundane motivations.” (¶ [0442].)

CLAIMS 1-13 REJECTED UNDER 35 U.S.C § 103(A) AS
RENDERED OBVIOUS BY KOBAL IN VIEW OF AU
Principles of Law
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
Analysis
Appellants’ arguments with respect to the combination of Kobal and
Au are persuasive. The Examiner acknowledges that Kobal fails to teach or
suggest identifying “semantic meanings” of transcripts or portions of a
transcript and assigning service levels to the transcripts or to the portions of
the transcript based on the identified “semantic meanings.” (Ans. 4.) Au
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describes the prioritization of “semantic motivations,” so that important
motivations may be handled in preference to unimportant mundane
motivations. (Facts 5, 7.)
In the cited portions of Au, Au describes “semantic motivations,”
rather than “semantic meanings.” (Fact 5.) Nevertheless, the Examiner
contends that
As Appellants pointed out on page 18 of the Brief, Au teaches
semantic motivations and Au teaches that the actions have
certain motivations. In other words, these actions are driven by
semantic motivation (paragraph 0442). That is, the
meaning/context has to be understood before an action can take
place. According to Au (paragraphs 0349 and 0442-0445)
these motivations are prioritized such that the system does not
stall important emergency motivations in favor of unimportant
mundane motivations.
(Ans. 6 (emphasis added).) Thus, the Examiner concludes that, at some
level, Au’s “semantic motivations” encompass Appellants’ “semantic
meanings.”
Appellants maintain, however, that the portions of Au cited by the
Examiner do not suggest that Au’s “semantic motivations” encompass
Appellants’ “semantic meanings.” First, Appellants note that, according to
Au, “[s]emantic motivations drive all actions within the present invention,
since they activate conversations which in turn activate abstract operations.”
(App. Br. 18 (quoting Au, ¶ [0442]).) This may demonstrate a relationship
between motivations, actions, and abstract operations, but it does not
establish a relationship between “semantic motivations” and the “semantic
meanings” of words. Second, Appellants note that Au states that “[s]ince a
variety of motivations may be active at any one time within a semantic
system, some means to prioritize [the motivations] is necessary, so that
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processor power can be correctly allocated.” (App. Br. 19 (quoting Au,
¶ [0442]); Facts 5, 7.) Consequently, Appellants demonstrate that Au
describes prioritizing “semantic motivations,” rather than assigning
priorities, e.g., service levels, “based on” semantic meanings, as described in
Appellants’ claims. Third, Appellants note that Au describes that “the
universal significance of fluidity,” rather than “semantic meaning,” is used
to determine the priority of active motivations. (Id. (quoting Au, ¶ [0442]);
Facts 2-4.)
As noted above, the Examiner indicates that “the meaning/context has
to be understood before an action can take place.” (Ans. 6.) Even if true,
this statement fails to establish that Au’s “semantic motivations” encompass
Appellants’ “semantic meanings.” “Rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR, 550 U.S. at 418. The Examiner
fails to identify where Au has linked the meaning of these terms or to
provide adequate reasoning under which these terms rationally may be
linked in Au, such that Au’s teaching regarding the prioritization of
“semantic motivations” may be applied to “semantic meanings.”
We further note that Au uses the term: “semantic meaning,” as well as
the term: “semantic motivation.” (Au, ¶¶ [0005], [0061], [0410]; Fact 1.)
Thus, Au has applied separate meanings to these terms, and the Examiner
fails to identify where Au links these terms. Consequently, the Examiner
has failed to establish that Au’s “semantic motivations” teach or suggest
“semantic meanings” as that term is used in Appellants’ claims.

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Au describes prioritizing “motivations,” not “meanings.” Even
assuming arguendo that Au’s “semantic motivations” could correspond to
“semantic meanings,” the Examiner still has failed to demonstrate that Au’s
prioritization of “semantic motivations” teaches or suggests that one of
ordinary skill in the art would have modified Kobal to use “semantic
motivations” to assign priorities, e.g., different service levels, to transcripts
or to portions of transcripts. (App. Br. 20-21.)
Accordingly, we do not sustain the Examiner’s obviousness rejection
of independent claim 1 or of claims 2-7, which depend from claim 1.
Independent claims 8, 12, and 13 include language relating to the use of
semantic meanings that is similar to that of claim 1. For the same reasons,
then, we likewise do not sustain the obviousness rejections of independent
claims 8, 12, and 13, or of claims 9-11, which depend from claim 8.

CLAIM 1 NEWLY REJECTED UNDER 35 U.S.C. § 101 AS DIRECTED
TO UNPATENTABLE SUBJECT MATTER
Principles of Law
Statutory provision 35 U.S.C. § 101, reads as follows: “Whoever
invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.”
Analysis
The U.S. Supreme Court acknowledges that the machine-or-
transformation test is a “useful and important clue or investigative tool” for
determining patent eligibility under § 101. Bilski v. Kappos, 130 S.Ct. 3218,
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3221 (2010). Nevertheless, “the Supreme Court has made clear that a patent
claim’s failure to satisfy the machine-or-transformation test is not dispositive
of the § 101 inquiry.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1371 (Fed. Cir. 2011) (citing Bilski, 130 S. Ct. at 3227). We further
note the intervening guidance of our reviewing courts. Thus, “[r]egardless
of what statutory category (‘process, machine, manufacture, or composition
of matter,’ 35 U.S.C. § 101) a claim’s language is crafted to literally invoke,
we look to the underlying invention for patent-eligibility purposes.” Id. at
1374. Following the Federal Circuit’s approach in CyberSource (654 F.3d at
1375), we analyze the underlying invention of Appellants’ independent
claim 1 as a process.
In independent claim 1, Appellants recite five steps: “identifying” a
first semantic meaning, “assigning” a first service level based on the first
semantic meaning, “identifying” a second semantic meaning, “assigning” a
second service level based on the second semantic meaning, and “verifying”
a transcription in accordance with the assigned service levels. None of these
recited steps, however, refers to a specific machine by reciting structural
limitations to any apparatus, or recites any specific operations that would
cause a machine to be the mechanism to perform these steps. As such, under
the broadest reasonable interpretation, the five steps of claim 1 read on a
mental process that could be performed in the human mind, or by a human
using a pen and paper. See CyberSource, 654 F.3d at 1372 (holding that a
method for verifying the validity of a credit card transaction over the
Internet to be nonstatutory as an abstract idea capable of being performed in
the human mind or by a human using a pen and paper). “[M]ental
processes–or processes of human thinking–standing alone are not patentable
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even if they have practical application.” In re Comiskey, 554 F.3d 967, 979
(Fed. Cir. 2009); see also Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
(“Phenomena of nature . . . , mental processes, and abstract intellectual
concepts are not patentable, as they are basic tools of scientific and
technological work.”). In view of the Supreme Court’s guidance in Bilski,
130 S. Ct. 3218, as expanded upon by the Federal Circuit in CyberSource,
we conclude that independent claim 1 is directed to an unpatentable mental
process.
We acknowledge that the preamble of claim 1 states that the claim is
“[a] computer-implemented method.” Nevertheless, we find this language,
at best, suggests a nominal use of a general purpose computer and imposes
no meaningful limits on the scope of the claim apart from describing a field
in which to conduct the process. See Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333-34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render the claim patent eligible”). “In considering patent
eligibility under § 101, one must focus on the claims. This is because a
claim may ‘preempt’ only that which the claims encompass, not what is
disclosed but left unclaimed.” Id. at 1334. Accordingly, we reject claim 1
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
Although we decline to reject every claim, or even every independent
claim, under our discretionary authority under 37 C.F.R. § 41.50(b), we
emphasize that our decision does not mean that the remaining claims are
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patentable.4 Rather, we merely leave the patentability determination with
respect to the remaining claims to the Examiner. See MPEP § 1213.02.

CONCLUSIONS
We do not sustain the obviousness rejections of claims 1-13 under
35 U.S.C. § 103(a).
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim
1 under 35 U.S.C. § 101, as directed to non-statutory subject matter.

DECISION
The Examiner’s decision rejecting claims 1-13 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim
1 under 35 U.S.C. § 101, as directed to non-statutory subject matter. Rule
37 C.F.R. § 41.50(b) states that “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.” Further,
§ 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

4 See In re Abele, 684 F.2d 902, 909 (CCPA 1982).
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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).

REVERSED
37 C.F.R. § 41.50(b)

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