Rafael Lisitsa et al.

Patent Trials and Appeals Board

Oct 27, 2021

2020005120 (P.T.A.B. Oct. 27, 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.
15/365,700 11/30/2016 Rafael S. Lisitsa 35148.001C3 1003
34395 7590 10/27/2021
OLYMPIC PATENT WORKS PLLC
4979 Admiral Steet
Gig Harbor, WA 98332
EXAMINER
GEBREMICHAEL, BRUK A
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/27/2021 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):
joanne@olympicpatentworks.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAFAEL S. LISITSA, MARK SESTAK, and
GENNADY FELLER

Appeal 2020-005120
Application 15/365,700
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
CARL M. DeFRANCO, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–11 and 13–20.2 We have jurisdiction 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(a).
2 Claim 12 is cancelled. Jan. 22, 2020 Response After Final Action.
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THE INVENTION
Appellant’s invention relates to human language learning. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A computer-based and mnemonics-based language-
learning system comprising:
a hardware and communications platform that includes one
or more servers, each of which, in turn, includes one or more
processors, one or more memories, and stored computer
instructions that, when executed by the processors, control the
processors to
receive a request from a remote client for a set of
mnemonics associated with a word;
access a language-learning-database service to retrieve
the set of mnemonics; and
return the retrieved set of mnemonics to the remote
client.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Sameth US 5,697,789 Dec. 16, 1997
Krasney US 2003/0068604 A1 Apr. 10, 2003
Hirschfeld US 2004/0210591 A1 Oct. 21, 2004
Cytanovich US 2005/0069848 A1 Mar. 31, 2005
Andreev US 2007/0269775 A1 Nov. 22, 2007
Lewolt US 7,918,666 B1 Apr. 5, 2011
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The following rejections are before us for review:
1. Claims 1–11 and 13–20 are rejected under 35 U.S.C. § 101 as
being directed to a judicial exception to patentable subject matter.
2. Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable
over Krasney and Cytanovich.
3. Claims 2–11, 13, 15, and 17–20 are rejected under 35 U.S.C. § 103
as being unpatentable over Lewolt and Andreev.
4. Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable
over Lewolt, Andreev, and Hirschfeld.
5. Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable
over Lewolt, Andreev, and Sameth.
OPINION
Unpatentable Subject Matter – Claims 1–11 and 13–20
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, courts recognize certain exceptions to Section 101, namely:
(1) laws of nature, (2) natural phenomena, and (3) abstract ideas. See Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71 (2012).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo, 566 U.S.
at 72–73). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts.
Id. If so, we must secondly “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
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additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id.
In situations where an abstract idea is implemented on a computer, the
first step in the Alice/Mayo analysis asks whether the focus of the claims is
on a specific improvement in computer capabilities or, instead, on a process
that qualifies as an “abstract idea” for which computers are invoked merely
as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016). A claimed invention must embody a concrete solution to a
problem having “the specificity required to transform a claim from one
claiming only a result to one claiming a way of achieving it.” Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir. 2018), quoting
SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021–22 (Fed. Cir. 2018).
Frequently, computer software based inventions fail to pass section 101
muster, because they fail to recite any assertedly inventive technology for
improving computers or because the elements of the asserted invention are
so result-based that they amount to patenting the patent-ineligible concept
itself. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354–55
(Fed. Cir. 2016) (claims lacking “any requirements for how the desired
result is achieved”); SAP Am., 890 F.3d at 1022 (claims not focused on any
improved computer or network).
The Supreme Court characterizes the second step of the analysis as “a
search for an ‘inventive concept’ — i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’
Alice, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S.
at 72). Where the claim is directed to an abstract idea that is implemented
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on a computer, merely stating the abstract idea while adding the words
“apply it” is not enough to establish such an inventive concept. See
Alice, 573 U.S. at 223.
[I]f that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 224.
The PTO has published guidelines on the application of Section 101.
See 84 Fed. Reg. 50 (Jan. 7, 2019) (the “Guidelines”). Under the
Guidelines, in conducting step one of the Alice framework, we first look to
whether the claim recites:
(1) any judicial exceptions; and
(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Under prong 1 of an abstract idea analysis, we look to whether the claim
recites an abstract idea. Then, if it does, under prong 2, we look at the claim,
as a whole, and determine whether the claim is “directed to” the abstract
idea or, instead, is “directed to” a “practical application” of the abstract idea.
The Guidelines identify three key concepts as abstract ideas:
(a) mathematical concepts; (b) methods of organizing human activity; and
(c) mental processes. Guidelines, 84 Fed. Reg. at 52.
Under Step One – prong one of the Guidelines’ analysis, a method of
organizing human activity is recognized by the courts as an abstract idea.
See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed.
Cir. 2016) (classifying and storing digital images is an abstract idea as a
method of organizing human activity); see also Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (tracking
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financial transactions to determine whether they exceed a pre-set spending
limit is an abstract idea as a method of organizing human activity);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (screening messages is an abstract idea as a method of organizing
human activity); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (filtering internet content is an
abstract idea as a method of organizing human behavior).
Under prong 2 of Step 1 of the Guidelines, we do not assume that
such claims are directed to patent ineligible subject matter because “at some
level, all inventions embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.” TLI Commc’ns, 823 F.3d at 611
(quoting Alice). Instead, “claims are considered in their entirety to ascertain
whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed.
Cir. 2016). If the claims are not directed to an abstract idea, the inquiry
ends. Guidelines. If the claims are “directed to” an abstract idea, then the
inquiry proceeds to the second step of the Alice framework. Id.
Consequently, we consider whether Appellant’s invention includes
elements that integrate the judicial exception into a practical application. A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use 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.
Guidelines, 84 Fed. Reg. at 53.
Under step 2 of the Alice/Mayo analysis under our Guidelines, we
look more precisely at what the claim elements add in terms of whether they
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identify an “inventive concept” in the application of the ineligible matter to
which the claim is directed to. SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018). “A claim that recites an abstract idea
must include ‘additional features’ to ensure ‘that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea].’” Alice, 573 U.S.
at 221 (quoting Mayo, 566 U.S. at 77–78). Those “additional features” must
be more than well-understood, routine, conventional activity. Mayo, 566
U.S. at 79.
Appellant argues claims 1–11 and 13–20 as a group. Appeal
Br. 28–37. Claim 1 is representative. 37 C.F.R. § 41.37(c)(1)(iv).
Step 1 – prong 1
With respect to Step 1 – prong 1 under the Guidelines, claim 1 recites
a “computer-based” system for “mnemonics-based language learning.”
Claims App. Learning programs organize human activity. Multimedia Plus,
Inc. v. PlayerLync LLC, 198 F.Supp.3d 264, 269–70 (S.D.N.Y. 2016),
aff’d 695 F. App’x 577 (Fed. Cir. 2017); In re Noble Sys. Corp., Appeal
No. 2016-007634 (PTAB Aug. 10, 2018), aff’d 755 Fed.Appx. 1017 (Fed.
Cir. 2019).
Appellant gives a lengthy and more-or-less philosophical argument
regarding whether abstract ideas are or should be judicial exceptions to
patentable subject matter. Appeal Br. 4–11. Appellant describes the term
“abstract idea” as “largely vacuous” and undefined. Id. at 8. Appellant
characterizes, or rather mischaracterizes, abstract idea jurisprudence as
focused primarily on issues of preemption. Id. at 9. Appellant’s preemption
argument does not accurately reflect the current state of the law. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
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(“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot”).
With respect to whether the particular learning system of claim 1
recites an abstract idea in the form of a method of organizing human
activity, Appellant simply dismisses the matter as not “significant.” Id.
at 29. Moreover, Appellant denies that any human activity is recited in the
claim. Id. at 30. Appellant argues that the Manual of Patent Examining
Procedure (“MPEP”) lacks the force of law and, therefore, does not
constitute authority for rejecting the claims of a patent application. Id. at 34.
Appellant argues that there is nothing in Alice that is related to the current
claims. Appellant argues that the rejection is not more than a conclusory
assertion by the Examiner. Id. at 34.
Appellant’s argument that the principles of Alice do not apply to the
instant case is simply incorrect. Alice was concerned with implementation
of an abstract idea on a computer. Alice maintains that recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. Alice, 573 U.S. at 224. The bare fact that a computer exists in the
physical rather than purely conceptual realm “is beside the point.” Id. The
instant case, like Alice, merely recites an abstract idea and then implements
the idea on a computer. Contrary to Appellant’s position, Alice is directly
relevant to the issues before us.
Here, the claim preamble recites a “learning system.” Claims App. It
is beyond doubt that a human being does the “learning” contemplated in the
claim. Thus, claim 1 recites a judicial exception to patentable subject matter
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in the form of an abstract idea and, more particularly, to a method of
organizing human activity in the form of a learning program.
Step 1 – prong 2
With respect to Step 1 – prong 2 under our Guidelines, the Examiner
finds that the claim lacks additional elements that integrate the abstract idea
into a practical application. Final Act. 4. The Examiner notes that
Appellant claims generic data processing elements such as a computer, a
server, a database, and memory, but, nevertheless, determines they are used
in a manner that does not qualify as a practical application.
[T]he claimed additional elements fail to integrate the abstract
idea into a practical application since they fail to impose
meaningful limits on practicing the abstract idea. Instead, the
claimed additional elements are utilized merely as a tool to
implement the abstract idea.
Id. (emphasis omitted).
Appellant criticizes the Examiner’s determination of lacking a
practical application as “conclusory.” Appeal Br. 34. Appellant questions
whether the Examiner’s practical application analysis and finding has any
relevance to statutory subject matter jurisprudence under 35 U.S.C. § 101.
Id. Appellant argues that the controlling statute, 35 U.S.C. § 101, makes no
mention of computer elements, practical application, or meaningful limits on
practicing an idea. Id.
Appellant’s arguments are not persuasive. In arguing that Section 101
makes no express mention of practical applications, Appellant forgets that
the issue before us relates to a judicial exception to the statute as opposed to
the literal language of the statute itself. Stated differently, abstract idea
jurisprudence is a creature of judge made law, not statute. Thus, the
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Examiner, the MPEP, the Board, and the Guidelines published in the Federal
Register look not only to the statute, but also to case authorities from the
Supreme Court and the Federal Circuit for establishing the bounds of
judicial exceptions to patentable subject matter. Earlier in this Decision, we
cited to a representative sample of case authorities related to abstract ideas
as a judicial exception to statutory subject matter, in general, and abstract
ideas in the form of methods to organize human activity, in particular.
Appellant’s brief appears to ignore or dismiss a rather well developed body
of case law that has issued in the aftermath of the Supreme Court’s decisions
in Mayo and Alice. In short, Appellant’s arguments are far afield of the
established legal principles that govern our analysis here.
We agree with the Examiner that claim 1 lacks elements that integrate
the abstract idea into a practical application. The claim recites a computer
“hardware and communications platform” that performs three steps “when
executed” by a computer processor. Claims App. The first step receives a
request for data. Id. The second step accesses a database to retrieve the
data. Id. The third step delivers the retrieved data to the user. Id.
Basically, Appellant claims the most generic and basic use to which a
computerized database system can be put. The fact that the claim limits the
type of data that is stored, accessed, and retrieved to mnemonics is not
enough to render the application a “practical” one under our Guidelines.
The prospect that Appellant’s method uses a computerized “tool” does
not render the claims less abstract. An abstract idea does not become non-
abstract by limiting the invention to a particular technological environment.
Intellectual Ventures I, 792 F.3d at 1367; see also Affinity Labs of Tx., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (Merely limiting
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the field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract); Alice, 573 U.S.
at 224 (the fact a computer exists in the physical realm is beside the point).
Moreover, a person can request and obtain mnemonic information from
another person in normal conversation without ever using a computer.
The court’s decision in Thales Visionix Inc. v. United States, 850
F.3d 1343 (Fed. Cir. 2017) offers an example of what it means for an
abstract idea to be integrated into a practical application so as to avoid
Step 2 of the Mayo/Alice analysis. Appellant offers no argument and
presents no evidence in an effort to analogize the instant application to
Thales or any other similar case authority. Appellant merely using a
computer to facilitate access to mnemonic information falls short of a
“practical application” under by our Guidelines.
Step 2
Turning now to step 2 of the Alice/Mayo analysis under our
Guidelines, Appellant recites a “computer-based . . . learning system.”
Apart from the abstract idea of facilitating leaning by accessing information
stored on a computer, the claim recites that following “additional elements:”
a hardware and communications platform that includes one or
more servers, each of which, in turn, includes one or more
processors, one or more memories, and stored computer
instructions.
Claims App.
Appellant’s Specification describes the claimed platform as a
“personal computer” or “server.” Spec. 3. Elsewhere, it is referred to as a
“general-purpose” computer. Id. at 4. Such general-purpose computer
includes:
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one or more processors 208, system memory 210, various
different types of input-output ("I/O") devices 210 and 212, and
mass-storage devices 214 . . . [and] also includes many other
components, including power supplies, internal communications
links and busses, specialized integrated circuits, many different
types of processor-controlled or microprocessor-controlled
peripheral devices and controllers, and many other components.
Id. Such devices are described at a high level of generality that presumes
familiarity on the part of the reader. Id. None of the devices are described
in a way that purports to be an advance in computer technology.
A patent applicant is required to submit a specification that contains a
written description of the invention in “full, clear, concise, and exact terms.”
See 35 U.S.C. § 112(a). Generally, for purposes of the Alice/Mayo analysis,
a specification demonstrates the well-understood, routine, conventional
nature of step 2’s “additional elements” when it describes them in a manner
that indicates they are sufficiently well-known that they need not be
described with particularity to satisfy 35 U.S.C. § 112(a). That is certainly
the case here.
Essentially, all Appellant has done here is use generic computer
technology to facilitate access to information in a learning environment.
Appellant’s method recites an “abstract idea” for which computers are
invoked merely as a tool. Enfish, 822 F.3d at 1335–36. In short, claim 1 is
directed to an abstract idea that is implemented on a computer in a manner
that merely states the abstract idea while adding the words “apply it.” See
Alice, 573 U.S. at 223. This is not sufficient for patent eligibility. Id.
We have considered Appellant’s remaining arguments and find them
to be without merit. Accordingly, for the above reasons, the recited
elements of claim 1, considered individually and as an ordered combination,
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do not constitute an “inventive concept” that transforms independent claim 1
into patent-eligible subject matter. On this record, we affirm the Examiner’s
Section 101 rejection of claims 1–11 and 13–20.
Unpatentability of Claims 1–11 and 13–20
over Prior Art
Inasmuch as we sustain the Section 101 rejection of all pending
claims, we do not reach the Section 103 art rejections of such claims. See 37
C.F.R. § 41.50(a)(1) (explaining that the affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the Examiner on that claim, except as to any ground specifically
reversed).
CONCLUSION
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Rev’d
1-11, 13-20 101 Eligible Subject Matter 1-11, 13-20
1 103 Krasney, Cytanovich3
2-11, 13,
15, 17-20
103 Lewolt, Andreev4
14 103 Lewolt, Andreev, Hirschfeld5
16 103 Lewolt, Andreev, Sameth6
Overall
Outcome
1-11, 13-20

3 This prior art rejection is not reached. 37 C.F.R. § 41.50(a)(1).
4 This prior art rejection is not reached. 37 C.F.R. § 41.50(a)(1).
5 This prior art rejection is not reached. 37 C.F.R. § 41.50(a)(1).
6 This prior art rejection is not reached. 37 C.F.R. § 41.50(a)(1).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED