Happify, Inc.

Patent Trials and Appeals Board

Dec 13, 2021

2020006202 (P.T.A.B. Dec. 13, 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.
15/974,978 05/09/2018 Tomer Ben-Kiki 17917-000002-US-CPA 3289
27572 7590 12/13/2021
HARNESS DICKEY (TROY)
5445 Corporate Dr.
Suite 200
Troy, MI 48098
EXAMINER
SPARKS, JONATHAN A
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
12/13/2021 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):
sto-ptomail@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMER BEN-KIKI, RAN ZILCA, and
DERRICK CARPENTER
____________

Appeal 2020-006202
Application 15/974,978
Technology Center 2400
____________

Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
AMBER L. HAGY, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–26. See Appeal Br., Claim App. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Happify, Inc.
Appeal Br. 3.
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The present invention relates generally to a process for simulating
human cognitive functions by dynamically interacting with a user for the
purpose of increasing a level of engagement with the user. See Spec. ¶ 2.
Independent claim 10, reproduced below, is representative of the
appealed claims:
10. A method for a computing system to interact with
a user, the computing system comprising at least one processor,
the method comprising:
commencing, by the at least one processor, an
interactive session with a user;
receiving, by the at least one processor, input data
from the user during the interactive session;
analyzing, by the at least one processor, the
received input data; and
outputting, by the at least one processor, a
response to the user to continue the interactive session with the
user,
wherein prior to outputting the response, the at
least one processor:
identifies one or more topics from the received
input data;
ascertains a tone of the received input data;

generates a mirroring prompt based on the
identified one or more topics and the ascertained tone of the
received input data; and
output (sic) to the user the generated mirroring
prompt, and
wherein the outputting of the mirroring prompt to
the user during the interactive session causes an increase in a
level of engagement of the user with the interactive session.

Appellant appeals the following rejections:
R1. Claims 1–26 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act.
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7–31.
R2. Claims 1–18 are rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Gustafson (US 2015/0371663 A1, Dec. 24, 2015). Final Act.
31–36.
R3. Claims 19–26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maisonnier (US 2017/0125008 A1, May 4, 2017),
Gustafson, and Kamyar (US 2014/0276244 A1, Sept. 18, 2014). Final Act.
36–42.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).

ANALYSIS
Rejection under § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[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).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with the framework,
we first determine what concept the claim is “directed to.” See Alice, 573
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U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). For example, concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski,
561 U.S. at 611); 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 USPTO published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”), updated by
USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (jointly referred to as “Revised Guidance”); see
also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942
(Oct. 18, 2019) (notifying the public of the availability of the October
update).
Under the Revised Guidance “Step 2A,” the office first looks to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) look 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. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claims 10 and 23, and similarly,
system claims 1 and 19, the Examiner determines that the claims are directed
to “managing personal behavior or relationships or interactions between
people” (Final Act. 8), which is a type of abstract idea called “Certain
Methods of Organizing Human Activity.” For at least the following reasons,
we are persuaded that representative claim 10 recites an abstract idea.
For starters, Appellant’s Specification discloses:
More specifically, the present invention is directed to a computing
system and a technologically implemented method for dynamically
interacting with a user for the purpose of improving the user’s
happiness level by demonstrating empathy during such interaction
in order to cause, during such interaction in order to cause, among
other things, a higher level of engagement by the human with the
computing system.
Spec. ¶ 2; see also id. ¶¶ 5–6.
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In other words, Appellant’s Specification illuminates that the
character of the present invention seeks to use a computing device to cause a
high level of engagement with users so as to modify their psychological
well-being. See also Ericsson Inc. v. TCL Commc’ns Tech. Holdings Ltd.,
955 F.3d 1317, 1325 (Fed. Cir. 2020) (“[T]he specification may be helpful
in illuminating what a claim is directed to [but it] must always yield to the
claim language when identifying the ‘true focus of a claim.”’) (citation
omitted).
Claim 10 recites at least the following limitations: “A method for a
computing system to interact with a user . . . comprising:” (1) “commencing
. . . an interactive session with a user,” (2) “receiving . . . input data from the
user during the interactive session,” (3) “analyzing . . . the received input
data,” (4) “outputting . . . a response to the user to continue the interactive
session with the user,” (5) “identifies one or more topics from the received
input data,” (6) “ascertains a tone of the received input data,” (7) “generates
a mirroring prompt,” and (8) “output to the user the generated mirroring
prompt . . . causes an increase in a level of engagement of the user with the
interactive session.” See claim 10.
As noted by the Examiner, these limitations, under their broadest
reasonable interpretation, cover certain methods of organizing human
activity. Furthermore, as the Office explains, certain methods of organizing
human activity
encompass both activity of a single person (for example, a person
following a set of instructions or a person signing a contract
online) and activity that involves multiple people (such as a
commercial interaction), and thus, certain activity between a
person and a computer (for example a method of anonymous loan
shopping that a person conducts using a mobile phone) may fall
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within the “certain methods of organizing human activity”
grouping. The number of people involved in the activity is not
dispositive as to whether a claim limitation falls within this
grouping. Instead, the determination should be based on whether
the activity itself falls within one of the subgroupings [e.g.,
managing personal behavior or relationships or interactions
between people].
October 2019 Update: Subject Matter Eligibility at 5.
Here, representative method claim 10 clearly encompasses certain
interactive activities between a user and a computing system. Appellant
even admits that that claims are described in this way, i.e., “none of these
cases involves a computing system for conducting interactive therapy
sessions with users as claimed.” See Appeal Br. 13. As such, we find
unavailing Appellant’s contention that “Appellant’s claims do not recite an
abstract idea” (see Appeal Br. 13), given the claims expressed activity
between a user and a computing device.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that representative claim 10 recites an abstract idea, which we
conclude is “interactions between people” under “certain methods of
organizing human activity.”
Step 2A—Prong 2 (integration into Practical Application) 2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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Here, we consider the claim as a whole, i.e., “the limitations
containing the judicial exception as well as the additional elements in the
claim besides the judicial exception . . . evaluated together to determine
whether the claim integrates the judicial exception into a practical
application.” October 2019 Patent Eligibility Guidance Update, at 12,
available at http://www.uspto.gov/PatentEligibility.
Beyond the abstract ideas noted above in the Prong-1 analysis,
representative claim 10 also recites several additional elements: “a
computing system comprising . . . at least one processor.” In addition to the
components recited in claim 10, claim 1 further recites “at least one
memory.” However, these additional elements do not: (1) improve the
functioning of a computer or other technology; (2) are not applied with any
particular machine (except for a generic computer); (3) do not effect a
transformation of a particular article to a different state; and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)–(c), (e)–(h). In other words, the
aforementioned additional element (or combination of elements) recited in at
least Appellant’s claims 1 and 10 do not integrate the judicial exception into
a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55
(“Prong 2”).
Appellant contends “the Examiner does not consider the claim as a
whole, does not evaluate the additional elements and the alleged abstract
idea together, and does not evaluate how those limitations interact and
impact each other as required.” Appeal Br. 14. Specifically, Appellant
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contends that the Specification highlights “the improvements (solutions)
provided by the claimed system.” Appeal Br. 16. For example, Appellant’s
Specification states “dynamically interacting with a user for the purpose of
improving the user’s happiness level by demonstrating empathy during such
interaction” and resulting “in a high level of engagement with the user for
the purpose of increasing the level of happiness of that user.” See Spec.
¶¶ 2, 39 (emphasis added).
Appellant’s Specification further states that in the claimed invention
“such dynamic responding by the computing system entails interaction that
includes demonstration of simulated human emotion and/or human cognitive
skill, such as empathy . . . result[ing] in a more personal and in-context
environment with the user, mimicking a human-to-human conversation”
(see Spec. ¶ 40; see also id. ¶¶ 55, 63, 70, 78, 86, 90, 93, 95–97) including
“artificial intelligence sufficient to provide the system with a so-called
‘mirroring’ ability . . . [which] employs various algorithms.” Spec. ¶ 54.
In other words, Appellant’s Specification merely indicates that the
improvement achieved relates to “improving the user’s happiness level,”
consequently resulting in “a high level of engagement with the user for the
purpose of increasing the level of happiness of that user” by utilizing known
artificial intelligence (“AI”) models employing various algorithms.
In Enfish, the Federal Circuit relied on the distinction made in Alice
between computer functionality improvements and uses of existing
computers as tools in aid of processes focused on “abstract ideas.”
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir.
2016). (“[T]he first step in the Alice inquiry in this case asks whether the
focus of the claims is on the specific asserted improvement in computer
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capabilities (i.e., the self-referential table for a computer database) or,
instead, on a process that qualifies as an ‘abstract idea’ for which computers
are invoked merely as a tool.”); see also Alice, 573 U.S. at 216.
Here, Appellant is merely using existing AI tools to achieve a higher
level of engagement from the user by simulating empathy. Specifically,
Appellant’s Specification states:
In more recent years, AI has progressed to the point of understanding
(at least from the machine’s perspective) the aspect of human
intelligence that is known as emotional intelligence, e.g., empathy. . . .
With recently developed AI emotion models, machines can now be
programmed to learn when and how to display emotion in ways that
enable the machine to appear empathetic or otherwise emotionally
intelligent.
Spec. ¶ 52. Appellant has not persuasively argued why the functions
performed in the claims – commencing an interactive session, generating a
mirroring prompt, and outputting a response – are not routine, conventional,
and well-known functions of existing AI emotion models system, which will
be discussed more fully below.
The court in Enfish held that “the plain focus of the claims is on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity.” Enfish, 822 F.3d at
1336. Here, Appellant does not point to anything in the claim that resembles
the inventive self-referential data structure at issue in Enfish. Appellant also
does not direct our attention to anything in the Specification to indicate that
the invention provides an improvement in the AI computer’s technical
functionality. Instead, the improvement is directed to cognitive engagement
of an individual in order to improve the happiness level.
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That is, here the arguably innovative technique of the appealed claims
is inextricably a part of the abstract idea of managing personal behavior or
interactions with a user. Therefore, unlike Enfish, the claims are directed not
to improvement in computer capabilities, but to the results of applying an
abstract idea, i.e., improving an user’s happiness level.
For at least the reason noted supra, we determine that claim 10
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 10 is directed to the
aforementioned abstract idea.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 10 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field,
which is indicative that an inventive concept may be present; or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.
See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
Appellant does not directly challenge whether claim 10 contains any
“inventive concept” or adds anything “significantly more” to transform the
abstract concept into a patent-eligible application. Instead, Appellant merely
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argues that the Examiner’s “allegation is a conclusion unsupported by any
findings or analysis.” See Appeal Br. 23–24.
On the contrary, the Examiner finds that “the additional elements of a
computing system compris[es] generic computing elements to perform the
abstract idea.” Final Act. 9. In support of the Examiner’s findings,
Appellant’s Specification states “[t]he operations of the present invention
may be carried out by . . . conventional procedural languages.” See Spec.
¶ 113. Appellant’s Specification further states that Artificial Intelligence
(AI) “has progressed to the point of understanding (at least from the
machine’s perspective) the aspect of human intelligence that is known as
emotional intelligence, e.g., empathy. . . . With recently developed AI
emotion models, machines can now be programmed to learn when and how
to display emotion.” Id. at 52. Berkheimer v. HP Inc., 881 F.3d 1360, 1369
(Fed. Cir. 2018) (“[w]hether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination.”). Here, we find that Appellant’s Specification describes
using known AI emotion models and programming using conventional
procedural languages.
Thus, we find no element or combination of elements recited in
Appellant’s claim 10 that contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Appellant has not adequately explained how claim 10 is
performed such that it is not a routine and conventional function of a generic
computer.
Because Appellant’s independent claim 10 is directed to a patent-
ineligible abstract concept, does not include additional elements that
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integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
of the claims 1–26 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter in light of Alice, its progeny, and the Revised Guidance.

Rejection under § 102
Claims 1–18
Claim 10 recites, inter alia, “generates a mirroring prompt based on
the identified one or more topics and the ascertained tone of the received
input data.” See claim 10 (emphasis added). Appellant contends that “while
Gustafson’s output is responsive to the user’s input, Gustafson’s output
simply does not reflect or resemble the user’s input and therefore does not
‘mirror’ the user’s input.” Appeal Br. 28. Appellant emphasizes that
“Gustafson’s output is not a ‘mirroring prompt’ under the plain dictionary
meaning of ‘mirroring’ and “prompt’ (to mirror means to reflect or
resemble, and to prompt means to assist by suggesting).” Id. at 25.
Appellant directs our attention to the Specification, which associates
“mirroring” with “to reflect back on input received.” See Spec. ¶ 54;
see also id. ¶ 63. For example, Appellant’s Figure 4C illustrate the
mirroring output, i.e., the user says “I am grateful for the sun coming out
today. It is finally spring.” See id. at Fig. 4C. The system responds by
saying: “OK. Thanks, Feeling the warmth of the sunshine can be a positive
enjoyable experience.” Id. As such, Appellant contends that “the
Examiner’s broad interpretation of the claimed mirroring prompt is
inconsistent with the plain, particular, and specific meanings and is therefore
unreasonable.” Appeal Br. 25.
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Here, the Examiner finds that “the broadest reasonable interpretation
[(BRI)], in light of the specification, of the mirroring prompt is a
response/output that is based on the user’s input(s) (i.e., reflective of the
user’s inputs/tones/feeling/etc.).” Ans. 12. Using this BRI, “the Examiner
finds that Gustafson analyzes user inputs to identify term, keywords,
phrases, etc., determines/extracts attributes from the inputs including tone,
tempo, syntax, grammar, etc., and formulates an output responsive to the
input.” Id. Thus, in essence, we find that both Appellant’s and the
Examiner’s interpretation of the claimed “mirroring prompt” are consistent
with Appellant’s Specification. As a result, we find that a “mirroring
prompt” is a response/output that is based on the user’s input(s) and
reflective of the user’s inputs/tones/feeling/etc.
Consistent with the aforementioned interpretation, Gustafson
discloses:
At step 206, the scoring module 144 and the execution
module 124 formulate an output responsive to the input and
personality type of the user 102. For example, . . . the inputs
received include an elevated heart rate (as transmitted by a heart
rate monitor, Fitbit® or similar device) and a vehicle speed that
exceeds the speed limit (as transmitted by a vehicle GPS
interface), the scoring module 142 can draw conclusions on the
user’s 102 mental state. The user 102 could be determined to
be in a hurry, feeling rushed, or feeling distressed. Based on all
this information and the personality type of the user 102 (e.g.,
emotions type), the scoring module 142 can, e.g., direct the
execution module 124 to suggest faster or less crowded routes
and to play soothing, calming music.
Gustafson ¶ 49. Gustafson also discloses that “[e]mbodiments of the
disclosure determines a user’s personality type so that the system’s
‘personality’ can be adjusted to be more pleasing to the user” (¶ 14) and “the
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interaction module 122 uses words associated with the user’s 102
personality type, and selects the best combination of communication
attributes (e.g., tone, tempo, syntax, grammar, etc.) to communicate a
response or output to the user 102.” ¶ 51. Gustafson further discloses that
“the interaction module 122 determines if the output results in a decrease in
the user’s 102 distress or an increase in the user’s 102 engagement.” Id.
¶ 54.
In other words, Gustafson generates an output indicative of a
“mirroring prompt” because Gustafson’s system not only outputs suggestive
routes when a user appears rushed and suggests soothing, calming music
when a user is seemingly distressed, but also uses words that mimic the
user’s personality, tone, tempo, etc. Accordingly, we find that Gustafson
provides outputs that act as mirroring prompts.
Accordingly, we sustain the Examiner’s rejection of representative
claim 10. Appellant’s arguments regarding the Examiner’s rejection of
independent claim 1 rely on the same arguments as for claim 10, and
Appellant does not argue separate patentability for the dependent claims 2–9
and 11–18. We, therefore, also sustain the Examiner’s rejection of claims 1–
9 and 11–18.
Rejection under § 103(a)
Claims 19–26
Because Appellant has not presented separate patentability arguments
or have reiterated substantially the same arguments as those previously
discussed for patentability of claim 10 above (see Appeal Br. 29), claims
19–26 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

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CONCLUSION
The Examiner’s rejection of claims 1–18 as being anticipated by
Gustafson and the rejection of claims 19–26 as being unpatentable over
Gustafson, Maisonnier, and Kamyar are affirmed.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–26 101 Eligibility 1–26
1–18 102(a)(1) Gustafson 1–18
19–26 103 Gustafson,
Maisonnier,
Kamyar
19–26
Overall
Outcome
1–26

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED