TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)Download PDFPatent Trials and Appeals BoardMay 29, 20202019002764 (P.T.A.B. May. 29, 2020) 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. 15/118,720 08/12/2016 Anders K. ERIKSSON 3602-1290 6637 6449 7590 05/29/2020 ROTHWELL, FIGG, ERNST & MANBECK, P.C. 607 14TH STREET, N.W. SUITE 800 WASHINGTON, DC 20005 EXAMINER PHAM, THIERRY L ART UNIT PAPER NUMBER 2674 NOTIFICATION DATE DELIVERY MODE 05/29/2020 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): PTO-PAT-Email@rfem.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDERS K. ERIKSSON Appeal 2019-002764 Application 15/118,720 Technology Center 2600 Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and DAVID J. CUTITTA II, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 2, 4–6, 8, 11, 12, 14–16, 18, and 23– 25. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We 1 We refer to the Specification, filed August 12, 2016 (“Spec.”); Final Office Action, mailed April 11, 2018 (“Final Act.”); Appeal Brief, filed September 11, 2018 (“Appeal Br.”); Examiner’s Answer, mailed December 21, 2018 (“Ans.”); and Reply Brief, filed February 19, 2019 (“Reply Br.”). 2 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 Telefonaktiebolaget LM Ericsson (publ). Appeal Br. 2. Appeal 2019-002764 Application 15/118,720 2 heard oral arguments in this appeal on May 13, 2020. A transcript of the hearing will be added to the record in due course. We AFFIRM. Summary of the Disclosure Appellant’s claimed subject matter “relates to exploiting the spatial coherence of multiple input audio channels in order to generate high quality multi[-]channel comfort noise.” Abstract. “Comfort noise, CN, is used by speech processing products to replicate background noise with an artificially generated signal.” Spec. ¶ 2. Illustrative claim Claim 1, reproduced below with element labels added in brackets, is illustrative of the claimed subject matter: 1. A method for generation of comfort noise for at least two audio channels, the method comprising: [(i)] determining spectral characteristics of audio signals on at least two input audio channels; [(ii)] determining a spatial coherence between the audio signals on the respective input audio channels; and [(iii)] generating comfort noise for at least two output audio channels, based on the determined spectral characteristics and spatial coherence. REJECTION Claims 1, 2, 4–6, 8, 11, 12, 14–16, 18, and 23–25 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2–4. Appeal 2019-002764 Application 15/118,720 3 STANDARD OF REVIEW The Board undertakes a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). OPINION We are not persuaded the Examiner erred in rejecting independent claims 1, 11, and 25 under 35 U.S.C. § 101 as being directed to patent- ineligible subject matter. Instead, we agree with and adopt the Examiner’s findings and reasoning in the Final Office Action and the Answer as our own and add any additional findings of fact appearing below for emphasis. I. Principles of Law 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 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 Supreme Court’s two-step 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 id. 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) Appeal 2019-002764 Application 15/118,720 4 (“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, 67–68 (1972)). Concepts 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 water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). 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. “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].’” 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. In January 2019, the USPTO published revised guidance on the application of § 101 (“Guidance”). See, e.g., USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Appeal 2019-002764 Application 15/118,720 5 Revised Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019) (“Update”), 84 Fed. Reg. 55942 (Oct. 18, 2019) (notice). Under the 2019 Revised Guidance, 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 activities such as a fundamental economic practice, or mental processes); and (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)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look 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. See 2019 Revised Guidance, 84 Fed. Reg. at 56. II. Examiner’s Determinations The Examiner determines the claims are directed to methods of generating comfort noise using determined spectral characteristics and spatial coherence that are similar to concepts determined to be abstract in Appeal 2019-002764 Application 15/118,720 6 Digitech,3 Electric Power Group,4 and Benson. 5 Final Act. 2–3. In addition to claim elements identified as corresponding to concepts determined to be abstract by the courts, the Examiner identifies a computing device, computer-readable media, and processors (see, e.g., independent claims 11 and 25). According to the Examiner, “[a]ll of the identified additional elements taken into consideration individually and in combination fail to amount to significantly more than the abstract idea.” Id. at 3. The Examiner explains: By adding in elements such as the “a computing device”, “computer-readable media” and “processors” the application appears to be “adding the words ‘apply it’ (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer;” and “simply appending well- understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.” Id. (citing Federal Register, Vol. 79, No. 241, dated Tuesday, December 16, 2014, page 74624). III. Appellant’s Contentions of Error Appellant contends the claims are not directed to an abstract idea but rather to “a very specific solution to a technical problem that is rooted in technology.” Appeal Br. 6. Appellant argues the claimed method of generating comfort noise “was not known in the art, and doing so is a novel 3 Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (organizing information through mathematical correlations). 4 Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (collecting information, analyzing it, and displaying certain results of the collection and analysis). 5 Gottschalk v. Benson, 409 U.S. 63 (1972) (mathematical procedure for converting one form of numerical representation to another). Appeal 2019-002764 Application 15/118,720 7 and nonobvious invention.” Id. According to Appellant, “the specification clearly explains that this represents a technical improvement to the state of the art by improving the field of audio signal processing.” Id. at 7. Appellant further contends as flawed the Examiner’s comparison of the pending claims to those found to encompass abstract concepts identified by the courts in Digitech, Electric Power Group, and Benson, alleging “none of these abstract formulations look anything like [Appellant’s] claim.” Id. Appellant argues “[t]o reach these comparisons, the Examiner has simplified the claim language, and ignored the context of the claims.” Id. According to Appellant: Generating comfort noise, in a specific manner involving determining spectral characteristics and spatial coherence, and generating the comfort noise based on these determined quantities, is far removed from the types of things that courts have held to be abstract. Indeed, the claims recite a specific and detailed process or arrangement to improve the performance of a particular technological field. As described in the specification, and also explained below, the claimed features allow for improved comfort noise generation, resulting in less of the unpleasant results associated with the prior art (e.g., users experiencing something strange or annoying with the sound, such as the experience that the noise source is located within their head). Id. at 8. Appellant further contends “[e]ven if the claims are directed to an abstract idea (which they are not), the claims would still be patent eligible because the claims include an inventive concept – that is, the claims include significantly more than the alleged abstract idea.” Id. at 11. Appellant argues the claims solve unique technical problems involved in generating comfort noise of at least two audio channels. Id. at 12. According to Appeal 2019-002764 Application 15/118,720 8 Appellant, the claims provide “specific technical improvements to the field [of audio processing], whereby the annoying and unpleasant results of the prior art are avoided.” Id. Appellant still further contends the Examiner does not explain why the dependent claims are directed to abstract ideas or fail to recite significantly more than those abstract ideas. Id. at 12. Finally, Appellant argues: [A]ccording to the USPTO’s memorandum of April 19, 2018 (the “Berkheimer Memo”), the Examiner cannot reject claims under section 101 unless the Examiner concludes that the recited combination of elements “is widely prevalent or in common use in the relevant industry” and the Examiner’s conclusion is based upon “a factual determination.” (Berkheimer Memo at page 3, lines 1-10 (emphasis added)). In this case, the Examiner has not made such a conclusion with respect to the claims, let alone provided any factual support for such a conclusion. Id. at 13. IV. Step 2A, Prong One (Judicial Exception) Under Prong 1 of the 2019 Revised Guidance, we determine whether the claim recites a recognized judicial exception. We agree with the Examiner that the claim elements are similar to those determined to be recited abstract concepts in Digitech, Electric Power Group, and Benson. Ans. 3. Element (i) of claim 1 recites “determining spectral characteristics of audio signals on at least two input audio channels.” Appellant discloses “the spectral characteristics, denoted e.g. H_l(f) and H_r(f) are determined according to a . . . suitable method” (Spec. ¶ 35) and “[t]his could . . . be performed using Fourier analysis of the input audio signals” (Spec. ¶ 37). A Fourier transform is defined as “a mathematical method, developed by Appeal 2019-002764 Application 15/118,720 9 French mathematician Jean-Baptiste-Joseph Fourier (1768-1830), for signal processing and signal generation tasks such as spectral analysis and image processing. The Fourier transform converts a signal value that is function of time, space, or both into a function of frequency.” MICROSOFT COMPUTER DICTIONARY 223 (5th ed. 2002). Similarly, a Fourier series is defined as an “[i]nfinite series of sine and cosine functions, capable if uniformly convergent of approximating a wide variety of mathematical functions.” The American Heritage Dictionary of the English Language 520 (Morris ed., 1981).6 Thus, the determining required by claim element (i) is reasonably interpreted as reciting a mathematical calculation (e.g., Fourier analysis) that is a mathematical concept. The 2019 Revised Guidance recognizes mathematical concepts as constituting abstract ideas. 2019 Revised Guidance, 84 Fed. Reg. at 52. Element (ii) of claim 1 recites “determining a spatial coherence between the audio signals on the respective input audio channels.” Appellant discloses a spatial coherence is determined as follows: The spatial coherence of the background noise can be obtained using the s coherence function C(f) = ǀS_xy(f)ǀ̂ 2/(S_x(f)*S_y(f)) where S_x(f) is the averaged spectrum of the left channel signal, S_y(f) is the averaged spectrum of the right channel signal, and 6 See also IEEE 100: The Authoritative Dictionary of IEEE Standards Terms 453 (7th ed. 2000) (defining a Fourier series to mean “A single-valued periodic function (that fulfills certain mathematical conditions) may be represented by a Fourier series as follows 𝑓𝑓(𝑥𝑥) = 0.5𝐴𝐴0 + � [𝐴𝐴𝑛𝑛 cos𝑛𝑛𝑥𝑥 + 𝐵𝐵𝑛𝑛 sin𝑛𝑛𝑥𝑥] 𝑛𝑛=∞ 𝑛𝑛=1 = 0.5𝐴𝐴0 + � 𝐶𝐶𝑛𝑛 sin(𝑛𝑛𝑥𝑥 + 𝜃𝜃𝑛𝑛) 𝑛𝑛=∞ 𝑛𝑛=1 ” Appeal 2019-002764 Application 15/118,720 10 S_xy(f) is the cross-spectrum of the left and right channel signals. These spectra can e.g. be estimated by means of the periodogram using the fast Fourier transform (FFT). Spec. ¶ 18. Claim 5 similarly describes a mathematical calculation for determining a spatial coherence as follows: 5. The method according to claim 1, wherein the spatial coherence Cxy between two signals, x and y, of the at least two signals, is determined as: Cxy = ǀSxyǀ2/(Sxx2 * Syy2); where Sxy is the cross-spectral density between x and y, and Sxx and Syy is the autospectral density of x and y respectively. C.f. Spec. ¶ 44. Thus, determining a spatial coherence required by claim element (ii) is reasonably interpreted as reciting a mathematical calculation that is a mathematical concept recognized as constituting an abstract idea. 2019 Revised Guidance, 84 Fed. Reg. at 52. Element (iii) of claim 1 recites generating comfort noise for at least two output audio channels, based on the spectral characteristics and spatial coherence determined according to the steps of the preceding claim elements (i) and (ii). Appellant discloses comfort noise is generated as follows: A spatially and spectrally correlated CN may be obtained as n_l(t) = ifft(H_1(f)*(W_1(f) + G(f)*W_2(f))) n_r(t) = ifft(H_2(f)*(W_2(f) + G(f)*W_1(f))) where H_1 (f) and H_2(f) are spectral weighting functions obtained as a function of the signal spectra S_x(f) and S_y(f), G(f) is a function of the coherence function C(f), and W_1 (f) and W_2(f) are pseudo random phase/noise components. Spec. ¶ 20. Similarly, claim 8 recites: 8. The method according to claim 1, wherein the generation of a comfort noise signal N_l for an output audio channel comprises: Appeal 2019-002764 Application 15/118,720 11 determining a spectral shaping function H_l, based on the information on spectral characteristics of one of the input audio signals and the spatial coherence between the input audio signal and at least another input audio signal; and applying the spectral shaping function H_l to a first random noise signal W_l and on a second random noise signal W_2(f), where W_2(f) is weighted based on the coherence between the input audio signal and the at least another input audio signal. Appellant discloses a computer implementation using a procedure including a set of equations implemented in pseudo-code. Spec. ¶ 28. Thus, the generating of comfort noise required by claim element (iii) generates data and is reasonably interpreted as reciting a mathematical calculation that is a mathematical concept recognized as constituting an abstract idea. 2019 Revised Guidance, 84 Fed. Reg. at 52. For the reasons discussed above, we determine that claim 1 recites subject matter reasonably characterized as mathematical concepts (i.e., mathematical calculations), which are identified in the 2019 Revised Guidance as abstract ideas. See 2019 Revised Guidance, 84 Fed. Reg. at 52. III. Step 2A, Prong 2 (Integration into a Practical Application) Under Step 2A, Prong 2, of the 2019 Revised Guidance, we determine whether any of the additional elements beyond the abstract idea integrate the abstract ideas into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 54. The 2019 Revised Guidance provides exemplary considerations that are indicative of an additional element or combination of elements integrating the judicial exception into a practical application, such as an additional element reflecting an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. at 55; MPEP § 2106.05(a). Appeal 2019-002764 Application 15/118,720 12 Method claim 1 does not recite elements in addition to those discussed above as mathematical concepts identified as abstract ideas. Although claim 1 recites input audio channels, the inputs are merely the source of the recited audio signals, i.e., data or information, that are the subject of the mathematical calculations performed according to the method. Similarly, the generating step (element (iii) of claim 1) recites an intended use of the resultant comfort noise without positively reciting using the comfort noise, e.g., apply the comfort noise to the audio signals or channels. Instead, claim 1 only requires “generating comfort noise for at least two output audio channels.” As such, element (iii) of claim 1 is limited to performing calculations without reciting a practical application. In addition to those elements determined to constitute mathematical concepts, apparatus claim 11 recites a processor and memory. According to the Examiner “although structure such as processors are claimed, such structure is claimed at a high level of generality and is performing routine and conventional activities previously known to the industry and thus does not qualify as ‘significantly more.’” Final Act. 3. We agree with the Examiner. Id. Appellant discloses the use of conventional computer components (e.g., a processor and a memory) for implementing the recited functions. Spec. ¶¶ 60, 65, 67, 68, 72, 78, 85. Consistent with the 2019 Revised Guidance, these additional elements are not practical applications of a judicial exception as they are included among additional elements that merely recite “apply it” or similar language, or that merely includes instructions to implement an abstract idea on a computer, or that merely use a computer as a tool to perform an abstract idea. 2019 Revised Guidance, 84 Fed. Reg. at 54. See also Alice, 573 U.S. at 221 Appeal 2019-002764 Application 15/118,720 13 (“[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.”); MPEP § 2106.05(f)(2) (“Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more.”). We disagree the claims are a specific solution to a technical problem (Appeal Br. 6) because mere generation of data representing comfort noise does not solve the problem of producing unpleasant effects for the listener (Spec. ¶ 4) or improve the field of audio signal processing (Appeal. Br. 7) unless it is applied to the audio channels or otherwise used in connection with a perceptible output result. Instead, the claimed method for the generation of comfort noise implements mathematical equations that are similar to the Arrhenius equation7 recited by claims considered by the Court in Diehr. Id. However, unlike Diehr, the results of the current claims are not applied to the audio signals or otherwise expressly and positively utilized. Thus, the argued improvement to audio signal processing is not directed to a technological field (e.g., an improved audio signal) but is part of the underlying concept of implementing particular mathematical concepts to provide improved comfort noise, i.e., data. In particular, the argued “improved comfort noise generation, resulting in less of the unpleasant results associated with the prior art (e.g., users experiencing something 7 The Arrhenius equation is a formula for the temperature dependence of reaction rates and is used to calculate the cure time in rubber-molding presses. Diamond v. Diehr, 450 U.S. at 193. Appeal 2019-002764 Application 15/118,720 14 strange or annoying with the sound, such as the experience that the noise source is located within their head)” is not realized according to the independent claims. In connection with independent claim 11, Appellant does not allege and we do not ascertain any improvement to the additional elements of a processor or memory, singularly or in combination. Similarly, the computer readable medium of claim 25 is not demonstrated to be improved. Unlike the method of operating a rubber-molding press that provided an improved molded rubber product as claimed in Diehr, Appellant’s claims only provide, at best, data representing an improved form of comfort noise that is not utilized according to the claims. Therefore, contrary to Appellant’s arguments (Appeal Br. 11–12) the claims fail to include significantly more than the abstract idea. Furthermore, we are not persuaded the claims are patent-eligible based on arguments of novelty and non-obviousness. Appeal Br. 6. A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. See also Diehr, 450 U.S. at 188–89 (1981) ( “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). We also are not persuaded that the claims are patent-eligible based on any similarity with the subject matter determined to be patent-eligible in Appeal 2019-002764 Application 15/118,720 15 Core Wireless8 or McRO9 as argued. See Appeal Br. 8–9. The claim in Core Wireless was directed to “an improved user interface for electronic devices, particularly those with small screens” where the improvement was in “the efficiency of using the electronic device by bringing together ‘a limited list of common functions and commonly accessed stored data,’ which can be accessed directly from the main menu.” Core Wireless, 880 F.3d at 1363. The Specification in that case confirmed these improvements were over “the prior art interfaces [that] had many deficits relating to the efficient functioning of the computer, requiring a user ‘to scroll around and switch views many times to find the right data/functionality.’” Id. The court found that the disclosure in the Specification regarding the improved speed of a user’s navigation through various views and windows “clearly indicates that the claims are directed to an improvement in the functioning of computers, particularly those with small screens.” Id. In contrast, Appellant does not demonstrate the claimed method of generating comfort noise is related to an identified improvement in the functioning of computers. Likewise, because the comfort noise is not applied to the audio signals, audio channels, or otherwise used, there is no improvement to the field of audio signal processing. Similarly, the reasons claim 1 in McRO was found patent-eligible do not apply to Appellant’s claims. “The claimed improvement [in McRO] was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed improvement in [an associating] 8 Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018). 9 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal 2019-002764 Application 15/118,720 16 technique with no improved display mechanism.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). In other words, in McRO, data was used to improve the technology, i.e., the display mechanism. Here, although claim 1 recites generating comfort noise, it does not utilize the comfort noise so that there is no corresponding improvement to the audio signals resulting from the recited steps. We are also unpersuaded our analysis and determinations conflict with prior decisions of this Board reversing rejections under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter including the informational decisions identified by Appellant (Oral Hearing Transcript at 3, 11, 13–15). See Ex parte Hannun (formerly Ex parte Linden), Appeal No. 2018-003323, 2019 WL 7407450 (PTAB Apr. 1, 2019) (informative); Ex parte Smith, Appeal No. 2018-000064, 2019 WL 764497 (PTAB Feb. 1, 2019) (informative); Ex parte Olson, Appeal No. 2017- 006489, 2019 WL 4297780 (PTAB Mar. 25, 2019) (informative); Ex parte Fautz, Appeal No. 2019-000106, 2019 WL 2244873 (PTAB May 15, 2019) (informative). Although not binding authority, our informative decisions nonetheless provide instructive guidance and Board norms on patent eligibility issues. See PTAB Standard Operating Procedure 2, Rev. 10 § III, at 11.10 In Hannun the claims related to systems and methods for the transcription of speech into text. Hannun, slip op. at 2, 2019 WL 7407450, at *1. The Board found, although the recited predicted character probabilities were disclosed as being obtained using an algorithm, the 10 This document is available at https://www.uspto.gov/sites/default/files/ documents/SOP2%20R10%20FINAL.pdf Appeal 2019-002764 Application 15/118,720 17 mathematical algorithm or formula itself was not recited in the claims. Id. at 10, 2019 WL 7407450, at *5. Therefore, the Board found error in the Examiner’s basis for determining the claim recited a mathematical concept. Id. However, the Board did not decide whether, in the absence of reciting a formula, the claim recited a mathematical calculation as determined herein in connection with Appellant’s instant claims. Instead, the Hannun panel determined “even if the claims were considered to recite a mathematical concept, under prong two of step 2A the claims are not directed to an abstract idea because the alleged judicial exception is integrated into a practical application.” Id. The Board agreed the claims included features designed to achieve an improved technological result by providing an improved speech recognition performance. Id. at 11, 2019 WL 7407450, at *5. In contrast to Appellant’s claims, the claim in Hannun practically applied the mathematical concepts by “decoding a transcription of the input audio using the predicted character probabilities outputs from the trained neural network constrained by a language model that interprets a string of characters from the predicted character probabilities outputs as a word or words.” Id. at 3, 2019 WL 7407450, at *1. Accordingly, the reasoning for reversing the Examiner’s rejection in Hannun is inapplicable to Appellant’s claim 1. In particular, we determine claim 1 includes no additional elements beyond the abstract idea. Furthermore, as explained above, the additional computer-related elements recited in the other independent claims, when considered individually and as an ordered combination, do not integrate the abstract idea into a practical application consistent with the 2019 Revised Appeal 2019-002764 Application 15/118,720 18 Guidance. Therefore, the Hannun decision is distinguishable over the present appeal. In Smith, the claimed timing mechanisms and associated temporary restraints on execution of trades were the additional elements that provided a specific technological improvement over prior derivative trading systems. See Smith, slip op. at 9, 2019 WL 764497, at *5. That is not the case here. As discussed above, the only additional elements in any of the independent claims are generic computer components and/or processing. Those additional elements, when considered individually and as an ordered combination, do not integrate the abstract idea into a practical application. In Olson, the Board determined claims directed to registering a catheter navigation system to a three-dimensional image used mathematical equations to register the image and, therefore, recited the judicial exception of a mathematical concept. Olson, slip op. at 10, 2019 WL 4297780, at *6. In addressing Prong 2 of the analysis, the panel determined the claim “recites additional limitations which focus on addressing problems arising in the context of registering a catheter navigation system to a three-dimensional image in connection with cardiac procedures.” Id. at 11, 2019 WL 4297780, at *6. These additional elements included (1) “placing a tool on a surface location Xi of the heart”; (2) “measuring position information for [] Xi relative to a coordinate frame X”; (3) “identifying a corresponding location Yi on the three-dimensional image”; and (4) “associating the position information for [] Xi as measured by the catheter navigation system relative to [] X with position information for [] Yi on the three-dimensional image relative to [] Y as a fiducial pair (Xi, Yi).” Appeal 2019-002764 Application 15/118,720 19 Id., 2019 WL 4297780, at *6. In particular, the Board determined the claimed limitations applied mathematical concepts with a particular machine, i.e., a catheter navigation system. Id. at 12–13, 2019 WL 4297780, at *7. Again, other than computer-related elements, Appellant’s claims do not include additional elements much less any that integrate the abstract idea into a practical application. The claims in Fautz were directed to a magnetic resonance (“MR”) tomography apparatus. Fautz, slip op. at 2, 2019 WL 2244873, at *1. Although determining the claims recited mathematical formulas and calculations using those formulas under Prong One, under Prong Two the Board determined the mathematical formulas and calculations were integrated into a practical application that provided an improved imaging system. Id. at 6–11, 2019 WL 2244873, at *4–6. Again, unlike Appellant’s independent claims, which do not positively recite applying the results of the calculations to the object argued to be improved (i.e., the audio signals or channels), Fautz’s claim 1 required reconstruction of the image data, i.e., improved image data resulting from the recited formulas and calculations. Id. at 2, 2019 WL 2244873, at *1. In particular, claim 1 of Fautz recited “said processor being configured to reconstruct image data of the examination subject on the basis of the sum signal MR(r), and to make the image data available at an output of the processor as an electronic data file.” Id. at 2, 2019 WL 2244873, at *1. Appellant’s independent claims include no corresponding limitation, e.g., resultant improved audio signals. For the reasons outlined above, we determine that claim 1 recites mathematical concepts, i.e., an abstract idea, and that the additional elements recited in the claim, i.e., processor, memory, and computer readable Appeal 2019-002764 Application 15/118,720 20 medium, are no more than generic components used as tools to perform the recited abstract idea. As such, the additional elements do not integrate the abstract idea into a practical application. See Alice, 573 U.S. at 223–24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that the independent claims are directed to an abstract idea. Step 2B As noted above, the only claim elements beyond the recited abstract idea are a memory and processor (claim 11) and computer readable medium comprising computer readable code (claim 25) performing each of the steps otherwise recited by the elements of claim 1. The Examiner finds the additional computer/processor elements “simply append[] well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.” Final Act. 3 (citing Federal Register, Vol. 79, No. 241, December 16, 2014, page 74624). Appellant contends the Examiner has not concluded “that the recited combination of elements ‘is widely prevalent or in common use in the relevant industry’ . . . based upon ‘a factual determination’” as required under Berkheimer.11 Appeal Br. 13 (emphasis omitted). Appellant’s contention is unpersuasive of reversible error. As explained above, the Examiner determines the additional elements are well- understood, routine, and conventional. Final Act. 3; Ans. 4. The 11 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Appeal 2019-002764 Application 15/118,720 21 Examiner’s determination is consistent with the Berkheimer Memorandum,12 Appellant’s claims merely reciting generic computer components (e.g., a processor, memory, and computer readable medium) performing generic computing functions that are well-understood, routine, and conventional (e.g., performing mathematical calculations). See Alice, 573 U.S. at 225 (the “use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are ‘well-understood, routine, conventional activit[ies]’ previously known to the industry”) (quoting Mayo, 566 U.S. at 71–73); see also Benson, 409 U.S. at 65 (“The computer operates then upon both new and previously stored data. The general-purpose computer is designed to perform operations under many different programs.”); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that using generic computing components like a microprocessor or user interface do not transform an otherwise abstract idea into eligible subject matter); Mortgage. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (indicating components such as an “interface” are generic computer components that do not satisfy the inventive concept requirement); MPEP § 2106.05(d)(II) (citing Alice and Mayo). Accord Berkheimer Memo. 3–4. For these reasons, we determine that claim 1 does not recite additional elements that, either individually or as an ordered combination, amount to significantly more than the judicial exception within the meaning of the 2019 Revised Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d). 12 Memorandum on Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr. 19, 2018) available at: https://www.uspto.gov/sites/default/ files/documents/memo-berkheimer-20180419.PDF Appeal 2019-002764 Application 15/118,720 22 Accordingly, we sustain the Examiner’s rejection of independent claims 1, 11, and 25. We are also unpersuaded the Examiner erred in rejecting the dependent claims. See Appeal Br. 12. Although examiners are instructed to evaluate the patent eligibility of each claim individually, consideration of each claim individually does not require a separate written analysis of each individual claim. Moreover, the Examiner explicitly addressed the dependent claims, explaining that the claims “do not provide any features/limitations that makes significant more/improvement in the technological field. Rather, [the dependent claims] further include[] more calculations (e.g. mathematical procedures).” Ans. 5; Final Act. 3–4. It also is telling here that, aside from charging that the Examiner’s analysis includes “no explanation for why [the] dependent claims . . . are also direct to abstract ideas or do not recite significantly more than those abstract ideas” (Appeal Br. 12), Appellant offers no substantive arguments in support of the separate patent eligibility of the dependent claims. In view of the foregoing, and for the reasons set forth above with respect to the independent claims, we sustain the Examiner’s rejection of dependent claims 2, 4–6, 8, 12, 14–16, 18, 23, and 24. Conclusion Appellant has not persuaded us that the Examiner erred in determining that independent claims 1, 11, and 25 recite one or more abstract ideas, that the claims fail to integrate the abstract idea into a practical application, or that the additional claim elements add significantly more to the abstract idea. Accordingly, Appellant does not persuade us of that the Examiner erred in Appeal 2019-002764 Application 15/118,720 23 concluding that claims 1, 11, and 25 are directed to patent-ineligible subject matter. Accordingly, we sustain the § 101 rejection of independent claims 1, 11, and 25. We also affirm this rejection of claims 2, 4–6, 8, 12, 14–16, 18, 23, and 24, which Appellant does not argue separately with particularity. DECISION SUMMARY In summary: TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 2, 4–6, 8, 11, 12, 14– 16, 18, 23–25 101 Eligibility 1, 2, 4–6, 8, 11, 12, 14–16, 18, 23–25 Copy with citationCopy as parenthetical citation