Jensson, Arnar Thor.

Patent Trials and Appeals Board

Aug 26, 2020

14116700 - (D) (P.T.A.B. Aug. 26, 2020)

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.
14/116,700 01/29/2014 Arnar Thor Jensson 20622.1 1074
22913 7590 08/26/2020
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
SAINT-VIL, EDDY
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARNAR THOR JENSSON

Appeal 2019-001700
Application 14/116,700
Technology Center 3700
____________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 18–22 and 24–30. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

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 COOORI
EHF. Appeal Br. 2.
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BACKGROUND
The Specification discloses that “[t]he present invention relates to a
language learning system and method adapted to personalize language
learning to individual users.” Spec. ¶ 1.
CLAIMS
Claims 18, 29, and 30 are the independent claims on appeal. Claim 18
is illustrative of the appealed claims and recites:
18. A language learning system adapted to personalize
language learning to individual users, comprising:
a data presenter configured to generate and present
learning related data to a user associated with a user ID;
a receiver adapted to receive, in response to said learning
related data, response data from the user indicating the users
response to said learning related data;
a processor that associates said learning related data to said
response data so as to couple the response from the user to said
learning related data; and
a database including a storage space associated to the user
ID for storing said learning related and said associated response
data and thus generating an individualized language knowledge
database for the user;
wherein the data presenter includes at least an electronic
display that displays the learning related data to the user in visual
form, a speaker that outputs the learning related data to the user
in audio form, or another hardware output device that presents
the learning related data to the user, the electronic display, the
speaker, or the other hardware output device being connected to
the processor,
wherein the receiver includes a keyboard, touch-board
mechanism, mouse, speech recognition system, or another
hardware user interface that is connected to the processor and
receives input from the user as the response data,

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wherein the processor is adapted to:
issue a true (tl) or false (fl) learning related data
indicator indicating whether the response data matches the
learning related data presented to the user, the tl or fl
indicator subsequently being associated to said learning
related data and stored at said storage space; and
monitor said tl indicators in said storage space and
based thereon repetitively presenting learning related data
having associated tl indicator to the user with user-specific
ascending memory spaced interval registered and
associated to the learning related data until a pre-defined
time interval limit has been reached, and based thereon
select at least one task to be presented to the user by said
data presenter, the at least one task representing a category
of exercises related to a particular language ability
learnable through performance of the exercises;
wherein a plurality of task specific exercises included
within said at least one task, each of which includes at least one
learning related data where said pre-defined interval has been
reached, are presented to the user with task time ascending
intervals between each task specific exercise in case a user's reply
to previous task specific exercises is correct or satisfactory,
wherein said task time ascending intervals between each
task specific exercise are spaced individually based on
determined task specific forgetting curves, each of the task
specific forgetting curves being characteristic for each individual
task, and each particular task specific forgetting curve being
individualized to the user based at least in part on the user's prior
performance of the task specific exercises categorized within the
particular task, and
wherein each of the task specific forgetting curves indicate
how entries travel deeper into memory as a function of time.
Appeal Br. 35–36.
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REJECTION
The Examiner rejects claims 18–22 and 24–30 under 35 U.S.C. § 101 as
claiming ineligible subject matter.
PRINCIPLES OF LAW
Section 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 U.S. 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 Court’s two-part 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 that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 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.”).
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, 67 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
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monopolize the [abstract idea].’” Id. (alterations in original) (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.
USPTO Section 101 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, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).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 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., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and

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 (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
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.
ANALYSIS
Step 2A, Prong One
Per the 2019 § 101 Guidance, we begin our Alice-step-one analysis by
determining whether independent claim 1 “recites” an abstract idea under
Prong One of Step 2A. (2019 § 101 Guidance, Federal Register Vol. 84,
No. 4, at 54.) The Guidance “extracts and synthesizes key concepts
identified by the courts as abstract ideas,” and these concepts include

3 This evaluation 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
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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“[c]ertain methods of organizing human activity,” and, more particularly,
“teaching.” (Id. at 52.)
Claim 18 sets forth a “language learning system adapted to
personalize language learning to individual users” that includes a “a data
presenter configured to generate and present learning related data to a user”
and a processor adapted to, inter alia, present a user with “at least one task
representing a category of exercises related to a particular language ability
learnable through performance of the exercises.” Appeal Br. 35–36. The
Specification discloses that “the invention preferably seeks to mitigate,
alleviate or eliminate one or more . . . disadvantages” of prior systems
including prior issues related to slowness and discontinuity in order to
maximize effectiveness by creating a fully tailored learning system with
which users can learn. See Spec. ¶¶ 2, 4. As such, we determine that the
claim includes limitations that would normally be employed by teachers
when providing a differentiated learning environment for students, i.e.
tailoring assignments based on individual students to maximize learning
effectiveness. Thus, we agree with the Examiner to the extent that the
Examiner finds that certain claim limitations represent usual or common
teaching practices, including the practice of presenting data and collecting
responses from students in order to determine correctness and provide
further teaching approaches. Based on the foregoing, at least for the
purposes of this appeal, we determine that claim 1 recites an abstract idea,
i.e., a method of organizing human activity in the form of teaching, under
Prong One of Step 2A of the Revised Guidance.
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Step 2A, Prong Two
We next must determine “whether the claim as a whole integrates the
recited judicial exception into a practical application of the exception.”
Revised Guidance, 84 Fed. Reg. at 54.
Claim 18 recites a system including “a data presenter,” “a receiver,”
“a processor,” and “a database,” each related to a processor for personalizing
language learning to individual users by generating and presenting learning
related data for a user in order to collect and store user responses related
thereto. Appeal Br. 35. With respect to the processor, claim 18 requires that
the processor is adapted to perform steps including:
issue a true (tl) or false (fl) learning related data indicator
indicating whether the response data matches the learning related
data presented to the user, the tl or fl indicator subsequently being
associated to said learning related data and stored at said storage
space; and
monitor said tl indicators in said storage space and based
thereon repetitively presenting learning related data having
associated tl indicator to the user with user-specific ascending
memory spaced interval registered and associated to the learning
related data until a pre-defined time interval limit has been
reached, and based thereon select at least one task to be presented
to the user by said data presenter, the at least one task
representing a category of exercises related to a particular
language ability learnable through performance of the exercises
Appeal Br. 35–36. Further, the claimed system requires:
wherein a plurality of task specific exercises included
within said at least one task, each of which includes at least one
learning related data where said pre-defined interval has been
reached, are presented to the user with task time ascending
intervals between each task specific exercise in case a user's reply
to previous task specific exercises is correct or satisfactory,
wherein said task time ascending intervals between each
task specific exercise are spaced individually based on
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determined task specific forgetting curves, each of the task
specific forgetting curves being characteristic for each individual
task, and each particular task specific forgetting curve being
individualized to the user based at least in part on the user's prior
performance of the task specific exercises categorized within the
particular task, and
wherein each of the task specific forgetting curves indicate
how entries travel deeper into memory as a function of time.
Id. at 36.
According to the Examiner, “[t]he processor and database are recited
at a high level of generality and are recited as performing generic computer
functions routinely used in computer applications.” Final Act. 4. The
Examiner further finds that the claimed system does not require anything
other than “off-the-shelf, conventional computer components” and that
certain functions claimed are “well-established” and have previously been
“[c]omputerized.” Id. at 4–5. The Examiner also finds that “[i]t is evident
that the claimed invention generally relates to data manipulation based on
the well-known forgetting curve using (a) regular computer device.” Id.
at 5.
However, when an additional element in a claim is a “computer,” the
relevant question is not whether the claim requires the computer to
accomplish a recited function. See Alice, 573 U.S. at 223. Rather, “the
relevant question” is whether the claim does more than simply “instruct the
practitioner to implement the abstract idea” on a computer. Id. at 225. The
mere recitation of a computer in the claim, and/or words simply saying
“apply” the abstract idea “with a computer,” will not transform the abstract
idea into a patent-eligible invention.” Id. at 223.
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Here, we determine that claim 18 does more than simply instruct a
practitioner to implement forgetting curves on a generic computer. Rather,
claim 18 requires the system, including the claimed processor, to perform
specific software steps to implement an adaptive language learning program
for individual users. For example, the claim requires that the data presenter
presents learning related data to a user, which requires a user response; a
processor that issues true and false indicators related to the user’s responses
and a processor that monitors the true indicators to “repetitively present[]
learning related data . . . to the user with user-specific ascending memory
spaced interval registered and associated to the learning related data until a
pre-defined time interval limit has been reached” and to select “one task
representing a category of exercises related to a particular language ability
learnable through performance of the exercises.” Appeal Br. 35–36.
Further, the system uses the “task specific exercises . . . presented to the user
with task time ascending intervals between each task specific exercise in
case a user’s reply to previous task specific exercises is correct or
satisfactory” and wherein the intervals are based on forgetting curves
specific to each individual task and individualized to the user based on prior
performance and the “specific forgetting curves indicate how entries travel
deeper into memory as a function of time.” Id. at 36.
“[S]oftware can make non-abstract improvements to computer
technology just as hardware improvements can.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Here, the Specification
indicates that such improvements may relate to language learning for users
by better adapting a language learning system to an individual users. See
Spec. ¶¶ 2, 4, 5. Further, the claim appears to require specific steps by
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which software may be used to provide such improvements, as represented
by the limitations discussed above. The Examiner does not adequately
explain why these specific software limitations fail to integrate the abstract
idea into a practical application.4 Rather, the Examiner finds only that the
claimed computer components are recited at a high level of generality and
perform generic computer functions such as presenting, receiving,
associating, and storing data. Final Act. 4. The Examiner reiterates these
findings in the Answer. Ans. 10–11. The Examiner also indicates that the
claims only amount to an instruction to implement the abstract idea on a
computer and that the specific field in which the Specification is involved
does not make the data manipulation any less abstract. Id. at 9.
More specifically, the Examiner finds that “[t]he use of a forgetting
curve in interval/spaced learning/teaching is evidently well established” and
“[c]omputerized usage of such feature is also well-established.” Final
Act. 5. Yet, the Examiner does not address adequately the specific software
steps required by the claim in order to show that they do not represent a
practical application of the abstract idea. Thus, we determine that the
Examiner fails to establish, on the record before, that independent claim 18
is “directed to” an abstract idea so as to satisfy Alice step one. As such,
there is no need to perform Step 2B of the 2019 § 101 Guidance (and/or

4 Moreover, although “[s]ome elements may be enough on their own to
meaningfully limit an exception,” it is often “the combination of elements
that provide the practical application.” (See 2019 § 101 Guidance, Federal
Register Vol. 84, No. 4, at 55.) As such, “examiners should give careful
consideration to both the element and how it is used or arranged in the claim
as a whole.” (Id.)
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Alice step two), and “this concludes the eligibility analysis.” (2019 § 101
Guidance, Federal Register Vol. 84, No. 4, at 54.)
Based on the foregoing, we do not sustain the rejection of claim 18 or
dependent claims 19–22 and 24–28. The Examiner relies on substantially
the same findings and analysis with respect to independent claims 29 and 30,
and for the reasons set forth above, we also do not sustain the rejection of
these claims.
CONCLUSION
We REVERSE the rejection of claims 18–22 and 24–30.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
18–22, 24–30 101 Ineligible
Subject Matter
18–22,
24–30

REVERSED