Jonathan Andrew. Waterhouse et al.Download PDFPatent Trials and Appeals BoardSep 5, 201914245714 - (D) (P.T.A.B. Sep. 5, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/245,714 04/04/2014 Jonathan Andrew WATERHOUSE WATERHOUSE.JON- LZ.001NP 8263 22252 7590 09/05/2019 Plager Schack LLP Mark H. Plager 16152 BEACH BLVD. SUITE 207 HUNTINGTON BEACH, CA 92647 EXAMINER FLETCHER, JERRY-DARYL ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 09/05/2019 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): lzpatents@plagerschack.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JONATHAN ANDREW WATERHOUSE and MARY ALLEN MARSHALL ____________________ Appeal 2018-009058 Application 14/245,7141 Technology Center 3700 ____________________ Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the Examiner’s rejection of claims 1–10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is the sole independent claim under appeal. Below, we reproduce claim 1 as representative of the appealed claims. 1 “The real party in interest is Jonathan Andrew Waterhouse.” Br. 3. Appeal 2018-009058 Application 14/245,714 2 1. A non-transitory computer readable medium storing a program which when executed by at least one processing unit of a computing device provides a voice-activated unfolding of a story, the program comprising sets of instructions for: displaying a set of words to be read by a person reading the story on a display attached to a microprocessor; wherein the microprocessor is attached to a storage device; wherein the storage device houses the non-transitory computer readable medium; receiving an audible input from the person reading the story from an audible input device communicatively coupled to the microprocessor; while the user is providing an audible input, executing the following loop of instructions: determining whether the audible input represents a correct pronunciation of the displayed set of words with the microprocessor; while the user provides an incorrect pronunciation of the words on the display executing the following loop of instructions on the microprocessor until the user provides a correct pronunciation: stopping the story on the display until the correct pronunciation of the displayed set of words is completed while displaying an icon indicating that the pronunciation of the set of words is incorrect; engaging a teacher function that provides instruction on the correct pronunciation and the correct word order; and displaying a set of images on the display representing a vignette of a passage of the story associated with the displayed set of words and continuing with the story by displaying a next set of words. REJECTION The Examiner rejects claims 1–10 under 35 U.S.C. § 101 as reciting solely patent-ineligible subject matter. Appeal 2018-009058 Application 14/245,714 3 ANALYSIS Under 35 U.S.C. § 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. Yet, subject matter belonging to any of the statutory categories may, nevertheless, be ineligible for patenting. The Supreme Court has interpreted § 101 to exclude laws of nature, natural phenomena, and abstract ideas, because they are regarded as the basic tools of scientific and technological work, such that including them within the domain of patent protection would risk inhibiting future innovation premised upon them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013). Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply’” these basic tools of scientific and technological work. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (internal citation omitted). Accordingly, evaluating ineligible subject matter, under these judicial exclusions, involves a two-step framework for “distinguish[ing] between patents that claim the buildin[g] block[s] of human ingenuity and those that integrate the building blocks into something more, thereby transform[ing] them into a patent-eligible invention.” Id. (internal quotation marks and citation omitted). The first step determines whether the claim is directed to judicially-excluded subject matter (such as a so-called “abstract idea”); the second step determines whether there are any “additional elements” recited in the claim that (either individually or as an “ordered combination”) amount to “significantly more” than the identified judicially excepted subject matter itself. Id. at 217–18. Appeal 2018-009058 Application 14/245,714 4 The USPTO recently published revised guidance on the application of § 101, in accordance with judicial precedent. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (“2019 Revised Guidance”). Under the 2019 Revised Guidance, a claim is “directed to” an abstract idea only if the claim recites any of (1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes, without integrating the abstract idea into a “practical application”—i.e., without “apply[ing], rely[ing] on, or us[ing] 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.” Id. at 52–55. The considerations articulated in the MANUAL OF PATENT EXAMINING PROCEDURE § 2106.05(a)– (c) and (e)–(h) (“MPEP”) bear upon whether a claim element (or combination of elements) integrates an abstract idea into a practical application. Id. at 55. A claim that is “directed to” an abstract idea constitutes ineligible subject matter, unless the claim recites an additional element (or combination of elements) amounting to significantly more than the abstract idea. Id. at 56. Although created “[i]n accordance with judicial precedent” (id. at 52), the 2019 Revised Guidance enumerates the analytical steps differently than the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance addresses whether the claimed subject matter falls within any of the statutory categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether the claim at issue recites ineligible subject matter and, if an abstract idea is recited, Step 2A, Prong Two, addresses whether the claim integrates the recited abstract idea into a practical application. Id. at 54–55. Unless such Appeal 2018-009058 Application 14/245,714 5 integration exists, the analysis proceeds to Step 2B of the 2019 Revised Guidance, in order to determine whether any additional element (or combination of elements) amounts to significantly more than the identified abstract idea. Id. at 56. In the present Appeal, the claims satisfy Step 1 of the 2019 Revised Guidance. Independent claim 1’s preamble recites a “non-transitory computer readable medium” (Br., Claims App.), which is an article of manufacture in accordance with § 101. In relation to Step 2A, Prong One, of the 2019 Revised Guidance, the Examiner states that The claim has been interpreted as being directed to the abstract idea of: providing a story comprising: displaying words to be read by a person; receiving audible input from the person; determining whether the audible input is correctly pronounced; stopping the story until correct pronunciation is received; displaying an icon indicating incorrect pronunciation; engaging a teacher function that provides instruction on the correct pronunciation and the correct word order; displaying a set of images representing a vignette of a passage of the story associated with the words; and continuing the story by providing a next set of words. This is interpreted as an abstract idea of itself, and specifically an abstract idea where new data (audible input) is compared to stored data (pronunciation rules)[,] and rules are used to provide options (determining whether to stop story or display icon based on correctness of pronunciation). In alignment with the guidance provided by the Office, this is Appeal 2018-009058 Application 14/245,714 6 indicative of an abstract idea of itself where new and stored data are compared and rules are used to identify options (see Smart[G]ene [Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, (Fed. Cir. 2014)]). Additionally, the claims have been interpreted as being drawn to the collecting of information (audible input), the analysis of the information (determination of correct/incorrect pronunciation) and displaying certain results of the collection and analysis (displaying images representing a vignette of a passage associated with the words) (see Electric Power Group [(Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016))]). Non-Final Action 3–4; see also Answer 2–3. However, the Examiner does not fairly characterize what are essentially all of claim 1’s limitations as merely “compar[ing]” “new and stored data . . . and [using] rules . . . to identify options.” Non-Final Action 4. Indeed, our reviewing court has cautioned that one “‘must be careful to avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements” therein. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) and citing Diamond v. Diehr, 450 U.S. 175, 189 n.12 (1981)). By way of further example, as set forth above, claim 1 recites, in relevant part, “displaying a set of images on the display representing a vignette of a passage of the story associated with the displayed set of words and continuing with the story by displaying a next set of words.” Br., Claims App. Also as set forth above, the Examiner relies on the Federal Circuit’s reasoning in Electric Power Group to support the determination that the above recitation is directed to an abstract idea. Non-Final Action 4; Answer 3. However, in Electric Power Group, the court “recognized that merely presenting the results of abstract processes of collecting and Appeal 2018-009058 Application 14/245,714 7 analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” Elec. Power Grp., 830 F.3d at 1354 (emphases added). We do not agree with the Examiner that claim 1 “merely present[s] the results of abstract processes of collecting and analyzing information, without more.” Rather, the claim recites a series of interactively determined representations, culminating in displaying a set of images on the display representing a vignette of a passage of the story associated with the displayed set of words, and then continuing with the story by displaying a next set of words. Accordingly, the rejection does not adequately indicate that claim 1 recites a judicial exception, within the meaning of the 2019 Revised Guidance (84 Fed. Reg. at 52), such that the rejection errs in the analysis corresponding to Step 2A, Prong One, of the 2019 Revised Guidance. The Examiner does not apply any other analysis to the other claims in the Appeal. See, e.g., Final Action 2–6; see also, e.g., Answer 2–5. Therefore, in view of the foregoing, we do not sustain the rejection of independent claims 1, or its dependent claims 2–10, under 35 U.S.C. § 101. DECISION We REVERSE the Examiner’s § 101 rejection of claims 1–10. REVERSED Copy with citationCopy as parenthetical citation