Lebrun, Alexandre

Patent Trials and Appeals Board

Sep 4, 2019

14686771 - (R) (P.T.A.B. Sep. 4, 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.
14/686,771 04/14/2015 Alexandre Lebrun 26295-29145/US 5058
87851 7590 09/04/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
LELAND III, EDWIN S
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDRE LEBRUN
___________

Appeal 2018-005801
Application 14/686,771
Technology Center 2600
_________________

Before JASON V. MORGAN, JAMES B. ARPIN, and NABEEL U. KHAN,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellant1 filed a Request for
Rehearing (“Req. Reh’g”), dated August 5, 2019, seeking reconsideration of
our Decision on Appeal mailed June 4, 2019 (‘Dec.’),2 in which we affirmed
the Examiner’s rejection of claims 1–15 under 35 U.S.C. § 101 as directed to

1 Appellant asserts Facebook, Inc., is the real party-in-interest. App. Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“App. Br.,” filed
January 29, 2018) and Reply Brief (“Reply Br.,” filed May 18, 2018); the
Final Office Action (“Final Act.,” mailed July 12, 2017); the Examiner’s
Answer (“Ans.,” mailed March 19, 2018; and the originally-filed
Specification (“Spec.,” filed April 14, 2015). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
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patent-ineligible subject matter. Final Act. 3–7. We have jurisdiction over
the Request for Rehearing under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Appellant’s claimed methods and computer-readable media “relate[]
in general to the field of natural language processing, and in particular to an
email-like user interface and a crowd-source based network for configuring
and training a natural language system interfaced with a runtime system or
application.” Spec. ¶ 2 (emphasis added).
As noted above, claims 1–15 are pending. Claims 1 and 9 are
independent. App. Br. 12–13 (claim 1), 14–15 (claim 9) (Claims App.).
Claims 2–8 depend directly or indirectly from claim 1, and claims 10–15
depend directly or indirectly from claim 9. Id. at 12–16.
Claim 1, reproduced below, is representative.
1. A computer-implemented method comprising:
maintaining, by a configuration system, a plurality of natural
language (NL) instances, each NL instance developed by one or
more developers and comprising 1) a set of training data and 2)
a prediction model that predicts a user-desired application
function based on a NL query, the set of training data being used
to train the prediction model of each NL instance by mapping
application functions to NL queries;
receiving, by the configuration system, one or more linking
requests from the one or more developers to link NL instances to
other NL instances of the plurality of NL instances, each of the
one or more developers in communication with the configuration
system via a network and at least one of the one or more
developers being separate from the configuration and other
developers of the one or more developers;
linking, by the configuration system, one or more NL
instances of the plurality of NL instances to one or more other
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NL instances of the plurality of NL instances responsive to the
received linking requests; and
training, by the configuration system, each of the NL
instances of the plurality of NL instances using:
(1) the set of training data for the NL instance, and
(2) each set of training data for other NL instances to which
the NL instance is linked;
for each of one or more of the plurality of NL instances:
receiving, from a client device of a user, an NL query
corresponding to an application request for the NL instance to
provide a user-desired application function based on the NL
query,
using the prediction model for the NL instance to determine
an application function according to the prediction model, and
responding to the NL query of the user by providing the
determined application function to the client device.
Id. at 12–13. “The developer platform’s inbox allows for minimizing the
number of human interactions required to improve the quality and accuracy
of an NL configuration system in processing natural language expressions.”
Spec. ¶ 5; see id. ¶¶ 6, 8; see also Reply Br. 3 (“[T]the claimed method
allows a Natural Language (NL) configuration system to provide a
collaboration platform where developers configure and optimize their
natural language systems by leveraging the work and prediction model
training data of other developers when generating and configuring their own
prediction models.” (emphases added)).
Because Appellant only argues the limitations of independent claim 1,
we understand that claims 2–15 stand or fall with claim 1. For the reasons
given below, we continue to sustain the Examiner’s rejection.
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DISCUSSION
1. Overview
Appellant asserts that (1) we mistakenly determined that claim 1
recited “[c]ertain methods of organizing human activity,” i.e., an abstract
idea, in view of the “wake-up call” example described in the Specification
(Spec. ¶ 19); and (2) we overlooked claim 1’s similarity to Example 39 from
the Subject Matter Eligibility Examples that accompanied the 2019 Revised
Patent Subject Matter Eligibility Guidance (2019 Subject Matter Eligibility
Examples: Abstract Ideas, 8–9 (Jan. 7, 2019)). Req. Reh’g 2–6. Initially,
we note that, although the “wake-up call” example appears in the
Specification, Appellant did not raise this example in the Appeal or Reply
Brief. Further, although Appellant asserted the similarity of the pending
claims to Example 1 of the Examples: Abstract Ideas,3 accompanying the
2014 Interim Eligibility Guidance and identifying a hypothetical patent
eligible claim, in the Appeal and Reply Briefs (App. Br. 8–9; Reply Br. 2),
Example 39 was not available when the Examiner mailed the patent
eligibility rejection to the pending claims or when Appellant filed the Appeal
or Reply Brief or when the Examiner mailed the Answer. See supra, note 2.
Consequently, Appellant did not raise arguments regarding Example 39
before this Request.
Generally, “[a]rguments not raised, and Evidence not previously
relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the
request for rehearing.” 37 C.F.R. § 41.52(a)(1) (emphasis added).
Moreover, the Office’s 2019 Revised Patent Subject Matter Eligibility

3 App. Br. 8 (citing https://www.uspto.gov/sites/default/files/documents/
abstract_idea_examples.pdf).
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Guidance is not a change in the law, but, instead, instructs Office personnel
on how to consistently and predictably apply the U.S. Supreme Court’s two-
part test for determining patent eligibility.4 Further, we did not raise a new
ground of rejection. See Dec. 1, 18 (affirming the Examiner’s rejection).
Thus, neither Appellant’s contentions relying upon the “wake-up call”
example nor those relying upon Example 39 satisfy the exceptions to the
requirements for requests for rehearing. See 37 C.F.R. § 41.52(a)(2)–(4).
Nevertheless, on this record and given the timing of the release of the
guidance and examples, we exercise our discretion here to consider
Appellant’s new contentions,5 but, for the reasons given below, we deny
Appellant’s request that we reverse the Examiner’s rejection of claims 1–15.

4 As the Office explains:
This guidance does not constitute substantive rulemaking
and does not have the force and effect of law. The guidance sets
out agency policy with respect to the USPTO’s interpretation of
the subject matter eligibility requirements of 35 U.S.C. 101 in
view of decisions by the Supreme Court and the Federal Circuit.
The guidance was developed as a tool for internal USPTO
management and does not create any right or benefit, substantive
or procedural, enforceable by any party against the USPTO.
Rejections will continue to be based upon the substantive law,
and it is those rejections that are appealable to the Patent Trial
and Appeal Board (PTAB) and the courts.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50,
51 (Jan. 7, 2019) (emphasis added).
5 Our exercise of discretion here deviates somewhat from the Office’s
preference for new contentions to be presented first to the examiner, so that
the appellant(s) and the examiner may address the merits of new contentions
during the normal course of prosecution. See 37 C.F.R. § 41.37(c)(1)(iv);
but see MPEP § 1205.02 (“This sentence is not intended to preclude the
filing of a supplemental brief or document if new authority should become
available or relevant after the brief or reply brief was filed. An example of
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2. “Certain methods of organizing human activity”
Appellant contends that the claims “that recite training a computer
model do not recite a judicial exception under Step 2A, Prong 1.” Req.
Reh’g 2. Under the Step 2A, Prong One, of the Office’s 2019 Revised
Patent Subject Matter Eligibility Guidance, if the claims are directed to a
recognized statutory category, we then look to whether the claims recite 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). See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 54–55 (“Revised
Step 2A”). In our Decision, we determined claim 1’s limitations, under their
broadest reasonable interpretation, recite “managing personal behavior or
relationships or interactions between people (including social activities,
teaching, and following rules or instructions),” which falls within the
broader category of “[c]ertain methods of organizing human activity.”
Dec. 10 (quoting 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. at 52). Thus, we determined that the rejected claims recite an
abstract idea, namely “[c]ertain methods of organizing human activity.” Id.
at 11; see Final Act. 3, 6; Ans. 4–6; 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 52.
Appellant contends:
While the claimed method enables a developer to use the training
data from the work of other developers, the claim as a whole is
not directed to managing relationships or interactions between
people (e.g., developers). Specifically, the claimed linking is not

such circumstances would be where a pertinent decision of a court or other
tribunal was not published until after the brief or reply brief was filed.”).
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a way to connect people, like developers. Instead, the claimed
linking is a way for a developer to define which training data will
be used to train the developer’s prediction model.
Req. Reh’g 2–3. As an example of the recited method, Appellant asserts
the prediction model may receive the NL query, “Wake me up at
6 tomorrow morning,” and the model would then output the
function “setalarm(0600)” to an alarm application, thereby
causing the alarm application to perform the application function
of creating a new alarm at 6 am. See Spec. at ¶ 19. The
prediction model and a set of training data used to train the
prediction model form an “NL instance.”
Id. at 3.
We do not find this example sufficient to show that we were mistaken
in determining that the claim recites an abstract idea. If a person requests
(e.g., “receiving . . . an NL query corresponding to an application request for
the NL instance to provide a user-desired application function based on the
NL query”) another person (e.g., a developer) to wake her up at 6:00am
(e.g., an interaction between persons involving a “natural language
expression”6), the other person can take in her surroundings to determine
what options for satisfying the request are available (e.g., gather “a set of
training data” forming a portion of an NL instance) and assess the possible

6 The Specification explains that:
The user inputs the NL query on the runtime system 112 through
voice commands, touch-screen gestures, audio signals or
keystrokes. An explicit form of an NL query includes as a natural
language expression. Example expressions of a NL query for
setting an alarm may include: “Wake me up at 6 tomorrow
morning,” “Set the alarm at 6 am,” and “I’d like you to wake me
up by 6 in the morning.”
Spec. ¶ 19; see id. ¶ 3.
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replies satisfying the request (e.g., “linking” NL instances and “using the
prediction model for the NL instance to determine an application function
according to the prediction model”). If the requestor and the other person
are in a hotel, the other person can call the front desk, which may be staffed
or automated (e.g., another developer or a client device), and arrange for a
wake-up call (e.g., a further interaction between persons); or the other
person can set an alarm clock (i.e., “responding to the NL query of the user
by providing the determined application function to the client device”) to
sound a 6:00am alarm, or the other person can use the alarm application on
the requester’s mobile phone (i.e., “responding to the NL query of the user
by providing the determined application function to the client device”) to
sound at 6:00am; or if the other person is getting up before 6:00am, the other
person can interact directly with the requester and simply wake up the
requester at 6:00am. Other options are possible. The decision on how to
ensure timely wake-up may occur in the other person’s mind (e.g., the
prediction model).7 Dec. 10; see Spec. ¶ 6 (“The NL configuration systems
are domain agnostic and based on actual end-users’ interactions validated by
each developer in the community for their own NL configuration system,
thus minimizing the time required to bootstrap and improve such a
system.”).

7 Although, in our Decision, we did not determine that the claims recited
“[m]ental processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion),” if prosecution resumes,
Appellant and the Examiner may wish to consider whether the claims also
recite a mental process. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 52.
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This example clearly encompasses interactions between people,
gathering and using of stored data, and invoking technology. See Final
Act. 3–4, 7; Reply Br. 6; see also Dec. 8–10 (“Thus, we agree with the
Examiner that the focus of this claim is on collecting information, modifying
it, analyzing it, and displaying certain results of the collection, modification,
and analysis. Ans. 6; see Electric Power Grp. Grp.[, LLC v. Alstrom S.A.],
830 F.3d [1350,] 1353 [(Fed. Cir. 2016)].”); Cellspin Soft, Inc. v. Fitbit, Inc.,
927 F.3d 1306, 1315 (Fed. Cir. 2019) (“As the district court recognized, we
have consistently held that similar claims reciting the collection, transfer,
and publishing of data are directed to an abstract idea.”). Although the
wake-up call example involves, and the claims recite, the production of “an
application function” based on the NL query to reply to the query, this is
merely the technological environment in which the reply to the NL query is
formulated. See Dec. 13–14; MPEP § 2106.05(h). Thus, we do not find
Appellant’s contention persuasive.
3. Hypothetical Claim of Example 39
Appellant further contends that Example 39 from the Subject Matter
Eligibility Examples provides an exemplary claim for a method for training
a machine learning model and that the patent eligible method of Example 39
parallels the methods recited in the rejected claims. Req. Reh’g 4.
Appellant concludes that the reasoning provided with respect to Example 39
directly applies to the rejected claims. Id.
“The Board decides cases in accordance with the law, not in
accordance with hypothetical” examples. Ex Parte Blythe, Appeal No.
2017-003176, 2018 WL 3047568, at *8 (PTAB May 31, 2018)
(nonprecedential). Example 39, like the other examples provided by the
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Office, is merely a “hypothetical [that is] only intended to be illustrative of
the claim analysis under the 2019 [Patent Eligibility Guidance].” Subject
Matter Eligibility Examples: Abstract Ideas, 1, available at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf (Jan. 7, 2019). Nonetheless, we assess to what extent the fact
pattern set forth by Example 39 bears on the claims of Appellant’s pending
application.
The hypothetical claim of Example 39 recites:
A computer-implemented method of training a neural
network for facial detection comprising:
collecting a set of digital facial images from a database;
applying one or more transformations to each digital facial
image including mirroring, rotating, smoothing, or contrast
reduction to create a modified set of digital facial images;
creating a first training set comprising the collected set of
digital facial images, the modified set of digital facial images,
and a set of digital non-facial images;
training the neural network in a first stage using the first
training set;
creating a second training set for a second stage of training
comprising the first training set and digital non-facial images that
are incorrectly detected as facial images after the first stage of
training; and
training the neural network in a second stage using the
second training set.
2019 Subject Matter Eligibility Examples: Abstract Ideas, 8–9.
Appellant contends “Example 39 recites a method for training a
model, where the method obtains two different training sets and then broadly
recites ‘training’ the model using those training sets.” Req. Reh’g 4.
Appellant asserts pending claim 1 recites training a prediction model of an
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NL instance using: “(1) the set of training data for the NL instance, and
(2) each set of training data for other NL instances to which the NL instance
is linked.” App. Br. 12 (Claims App’x). Appellant concludes
[j]ust as in Example 39, the claims recite how to obtain two sets
of training data (e.g., one set that is part of the NL instance and
another set that is part of another NL instance that was linked to)
and then recite using those two sets of training data to train a
model.
Req. Reh’g 5.
Appellant notes that, in finding the claims recite “[c]ertain methods of
organizing human activity,” we reasoned that “claim 1 does not restrict the
nature of the natural language instance prediction models, and, therefore,
claim 1 does not preclude the steps directed to training the natural language
instances and using them to determine an application function from
encompassing ‘steps people go through in their minds, or by mathematical
algorithms, without more.’” Id. (quoting Dec. 10). Appellant contends,
however, that the patent eligible claim of Example 39 is no more restrictive
than pending claim 1.
Further, Appellant contends that we improperly discounted “the
technical nature of the recited ‘training’ of the computer model because it
‘does not specify how “training” is accomplished, but instead focuses on
what is used to perform the “training” step.’” Id. at 6 (citing Dec. 9 n.5). In
particular, Appellant asserts,
training a prediction model using the “the set of training data for
the NL instance” and “each set of training data for other NL
instances to which the NL instance is linked” is no more able to
be “practically performed in the human mind” nor is it
“managing interactions between people” than the claim in
Example 39.
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Id.; see also 2019 Subject Matter Eligibility Examples: Abstract Ideas, 9.
As noted above, in the 2019 Subject Matter Eligibility Examples:
Abstract Ideas, the Office explains that the examples contained therein “are
hypothetical and only intended to be illustrative of the claim analysis under
the 2019 PEG. These examples should be interpreted based on the fact
patterns set forth below as other fact patterns may have different eligibility
outcomes.” 2019 Subject Matter Eligibility Examples: Abstract Ideas, 1
(emphasis added). Thus, we evaluate the pending claims in view of their
recitations, as understood in light of the disclosure of the Specification,
pursuant to the guidance provided by the Supreme Court and the Federal
Circuit, as interpreted by the Office. Trading Techs. Int’l, Inc. v. IBG LLC,
921 F.3d. 1084, 1095 (Fed. Cir. 2019) (“We are not bound by non-
precedential decisions at all, much less ones to different patents, different
specifications, or different claims. Each panel must evaluate the claims
presented to it. Eligibility depends on what is claimed, not all that is
disclosed in the specification.”); see 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 52 n.13 (citing, e.g., Interval Licensing
LLC v. AOL, Inc., 896 F.3d 1335, 1344–45 (Fed. Cir. 2018); Voter Verified,
Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir.
2018)). Mere similarity between the language of an hypothetical claim and a
pending claim is not sufficient to ensure patent eligibility. See Cleveland
Clinic Foundation v. True Health Diagnostics LLC, 760 Fed. Appx. 1013,
1021 (Fed. Cir. 2019) (“We have considered Example 29 and the arguments
relating to it, but to the extent that Example 29–Claim 1 is analogous to the
claims at issue, Ariosa [Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1376–78 (Fed. Cir. 2015)] must control.”).
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As the Federal Circuit noted, we evaluate the patent eligibility of the
claims presented to us based on what is recited in those claims, as
understood in light of the Specification. See Trading Techs., 921 F.3d. at
1095. As we noted in our Decision:
Claim 1 does not restrict the nature of the natural language
instance prediction models, and, therefore, claim 1 does not
preclude the steps directed to training the natural language
instances and using them to determine an application function
from encompassing “steps people go through in their minds, or
by mathematical algorithms, without more.”
Dec. 10 (citing Electric Power Grp., 830 F.3d at 1354).
Appellant does not dispute this determination, but, instead, merely
argues that the model recitations of the hypothetical claim of Example 39 are
equally or more broad. Req. Reh’g 5–6. Because the Specification
describes the “prediction model” broadly by what it does, rather than what it
is, we understand the term “prediction model” broadly to encompass a
suitable component “capable of predicting a user-desired application
function.” Spec. ¶ 34; see id. ¶¶ 6, 28, 43. Unlike pending claim 1, the
hypothetical claim of Example 39 recites how the neural network is trained
and what it is trained to do in a manner that excludes mental steps alone.
2019 Subject Matter Eligibility Examples: Abstract Ideas, 8–9 (“applying
one or more transformations to each digital facial image including
mirroring, rotating, smoothing, or contrast reduction to create a modified
set of digital facial images; creating a first training set comprising the
collected set of digital facial images, the modified set of digital facial
images, and a set of digital non-facial images; [and] creating a second
training set for a second stage of training comprising the first training set and
digital non-facial images that are incorrectly detected as facial images after
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the first stage of training” (emphasis added)); see id. at 8 (Background).
Consequently, we conclude that the model recitations of the hypothetical
claim of Example 39 are more specific and technical than those of the
pending claims and contribute to the assessment of its eligibility and that
pending claim 1 and the hypothetical claim of Example 39 are
distinguishable. Appellant does not persuade us otherwise.
For the reasons given above, we are not persuaded that we overlooked
or misapprehended points of law or fact, such that we should reverse the
Examiner’s determination that claims 1–15 are unpatentable.
DECISION
Appellant’s Request for Rehearing has been granted to the extent that
we have reconsidered our Decision in light of Appellant’s Request, but is
denied in all other respects.

DENIED