Jonathan Andrew. Waterhouse et al.

Patent Trials and Appeals Board

Sep 5, 2019

14245714 - (D) (P.T.A.B. Sep. 5, 2019)

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.
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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.
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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.
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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
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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
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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
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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