2021000487 (P.T.A.B. Aug. 19, 2021)

Aaron Seitz

Patent Trials and Appeals BoardAug 19, 2021

2021000487 (P.T.A.B. Aug. 19, 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. 13/276,529 10/19/2011 Aaron Seitz 00013-043001 4622 26138 7590 08/19/2021 Joseph R. Baker, APC Gavrilovich, Dodd & Lindsey LLP 4370 La Jolla Village Drive, Suite 303 San Diego, CA 92122 EXAMINER ZAMAN, SADARUZ ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 08/19/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte AARON SEITZ ____________________ Appeal 2021-000487 Application 13/276,529 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and SEAN P. O’HANLON, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 4–13, and 17–34 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Appeal Br. 5; see also Final Act. 2–5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as The Regents of the University of California. Appeal Br. 2. Appeal 2021-000487 Application 13/276,529 2 THE CLAIMED SUBJECT MATTER Claims 1, 19, 25, and 26 are independent. We reproduce claim 1 below. 1. A method for improving sensory and perceptual skills of a subject, comprising exposing the subject to a video and/or acoustic output device with an input device operably connected to a computer to present a video/computer game comprising a laboratory procedure proven to produce sensory and perceptual learning in subjects, wherein the method pairs a second stimulus comprising a task irrelevant multisensory stimuli of the laboratory procedure with reinforcing aspects of the video/computer game comprising a first stimulus having an action task component to improve the sensory and perceptual skills of the subject, and wherein the method enhances processing of the second stimulus comprising the sensory and perceptual stimuli. OPINION 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. Alice, 573 U.S. 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 Appeal 2021-000487 Application 13/276,529 3 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) (“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 (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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now Appeal 2021-000487 Application 13/276,529 4 commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). 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 (citation omitted). “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. (quoting Mayo, 566 U.S. at 77) (alterations in original). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The USPTO published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Eligibility Guidance” or “Guidance”). Under the 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 activity 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)). 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: Appeal 2021-000487 Application 13/276,529 5 (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 Eligibility Guidance. The Examiner’s Rejection The Examiner determines that the claims are directed to a judicial exception (i.e., an abstract idea) without significantly more. Final Act. 2. The Examiner explains that the claims recite improving sensory and perceptual skills of a subject, by exposing them to a video and/or acoustic output with a laboratory procedure proven in order to produce sensory and perceptual learning of a subject. The steps simply describe certain method[s of] organizing human activity to add a second stimulus that is comprising of task irrelevant (TIL) and multisensory (MF) stimuli reinforcing aspects of the first stimulus. The developer is generating . . . first and second stimuli of varying characteristics previously proven to be producing sensory and perceptual learning of a subject in a laboratory. This is basically assessing a trainee during exercise [in the] pre-computer era and thus managing personal behavior or interactions between people. Id. at 3. The Examiner determines that the claims recite additional elements including “a video/computer game consoles, a processor including acoustic output device comprises two speaker, a host device, sensors to input user movements, and a display with user interface.” Id. at 4. The Examiner explains that these additional elements do not impose meaningful limitations on the abstract idea identified above, as they are recited in a generic manner. Speakers and displays are described as in a common use of Appeal 2021-000487 Application 13/276,529 6 computers without resulting in an improvements to the functioning of a computer, or to any other technology or technical field or applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. Id.; see also id. at 5 (explaining that “computer components are recited at a high level of generality for performing basic computer functions and output based on the collected data, and are thus merely a field of use for computer arts”). The Examiner determines that “the claims do not include limitations that integrate the judicial exception in[to] a practical application.” Id. at 4. The Examiner also determines that the claims recite “well-understood, routine and conventional limitations that amount to mere instructions to implement the abstract idea on a compute[r].” Final Act. 5. According to the Examiner, the collection and recognition of data from human response to a stimulus does not amount to significantly more than an abstract idea. Id. Analysis In contesting the rejection, Appellant argues independent claims 1, 25, and 26 together (Appeal Br. 11–14), relies on the same argument for independent claim 19 (id. at 11), and does not present separate arguments for dependent claims 4–13, 17, 18, 20–24, and 27–34 (id. at 11–14). Appellant argues that independent “claim 19 does not contain limitations that can practically be performed in a human mind, or could be performed by humans without a computer.” Appeal Br. 11. Although claim 19 is directed to a “system,” the substance of the claim is no different than that of the method claims because it simply implements the same abstract idea. See Alice, 573 U.S. at 226 (“Put another way, the system claims are no different from the method claims in substance.”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1276–77 (Fed. Cir. 2012) Appeal 2021-000487 Application 13/276,529 7 (holding that the form of various method, system, and media claims did not change the patent eligibility analysis under § 101). We select claim 1 as representative, and claims 4–13 and 17–34 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). (1) Step 1: Does claim 1 fall within a statutory category of § 101? We first consider whether claim 1 recites one of the enumerated statutory classes of subject matter, i.e., process, machine, manufacture, or composition of matter, eligible for patenting under 35 U.S.C. § 101. Claim 1 recites “[a] method for improving sensory and perceptual skills of a subject” (Appeal Br. 15 (Claims App.)), which is one of the statutory classes (i.e., a process) under 35 U.S.C. § 101. (2) Step 2A, Prong One: Does claim 1 recite a judicial exception? The 2019 Subject Matter Guidance identifies three key concepts as abstract ideas: (a) mathematical concepts including “mathematical relationships, mathematical formulas or equations, mathematical calculations”; (b) certain methods of organizing human activity, such as “fundamental economic principles or practices,” “commercial or legal interactions,” and “managing personal behavior or relationships or interactions between”; and (c) mental processes including “observation, evaluation, judgment, [and] opinion.” 2019 Eligibility Guidance, 84 Fed. Reg. at 52. Here, claim 1 recites a method for improving sensory and perceptual skills that includes a step of “exposing” a subject to a video game that produces sensory and perceptual learning by pairing a task irrelevant multisensory second stimulus with a first stimulus of the video game. Appeal Br. 15 (Claims App.). According to the Specification, the claimed Appeal 2021-000487 Application 13/276,529 8 method “is based, in part, upon the observation that participants of various video games can gain perceptual benefits whether or not they are aware of the presentation of the trained stimuli as long as the trained stimuli are presented at the same time as a rewarding event.” Spec. ¶ 17; see also id. ¶ 4 (explaining that “[u]sing methodologies of task-irrelevant learning (TIL) basic perceptual features paired with important game elements [is] shown to better tune the perceptual systems to process those features”). In other words, claim 1 recites a method for training a subject to improve sensory and perceptual skills using paired stimuli presented via a video game, which amounts to “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions),” which is one of certain methods of organizing human activity that has been identified as an abstract idea. See 2019 Eligibility Guidance, 84 Fed. Reg. at 52. As discussed above, the Examiner determines that the claims recite a method of organizing human activity. Final Act. 3. Appellant does not specifically address the Examiner’s position, and, thus, does not apprise us of error. (3) Step 2A, Prong Two: Does claim 1 recite additional elements that integrate the judicial exception into a practical application? Having found that claim 1 recites a judicial exception, namely, an abstract idea, the 2019 Eligibility Guidance instructs us to determine whether the claim recites “additional elements that integrate the exception into a practical application.” 2019 Eligibility Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h). In particular, the Guidance describes that an additional element integrate the judicial exception into a practical application if the additional element (1) reflects an improvement in the functioning of a computer or an improvement to other technology or Appeal 2021-000487 Application 13/276,529 9 technical field; (2) applies or uses the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; (3) implements the judicial exception with, or uses the judicial exception with, a particular machine or manufacture integral to the claim; (4) effects a transformation or reduction of an article to a different state or thing; or (5) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id. Here, the additional elements recited in claim 1 beyond the judicial exception are “a video and/or acoustic output device with an input device operably connected to a computer.” Appeal Br. 15 (Claims App.). We agree with the Examiner that the additional elements (i.e., output device, input device, and computer) are recited in a generic manner. Final Act. 4. We discern no indication in Appellant’s Specification, nor does Appellant direct us to any indication, that the claimed invention is implemented using anything other than generic computer devices. The Specification describes that the video game can be displayed by a video gaming system (i.e., computer or electronic device) connected to a television or monitor, or directly on a portable device, such as a smart phone. Spec. ¶ 26. The Appeal 2021-000487 Application 13/276,529 10 Specification also describes that the video gaming system can connect to various peripheral devices (e.g., keyboard, mouse, speakers). Id. ¶¶ 26, 31. In other words, the additional elements are merely generically-recited computer components that do “no more than generally link the use of a judicial exception to a particular technological environment or field of use.” 2019 Eligibility Guidance, 84 Fed. Reg. at 55; see also Bilski, 561 U.S. at 610–11 (“[T]he prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity.”’) (quoting Diehr, 450 U.S. at 191–92). We note that the “recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible.” Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Alice, 573 U.S. at 222). Appellant argues that the claimed method involves “the specific use of a ‘specialized’ video/computer game that comprises a laboratory procedure proven to produce sensory and perceptual learning in subjects[,] and the specific and synergistic pairing of stimuli (task irrelevant multisensory stimuli of the laboratory procedure reinforced with the action task component of the computer game).” Appeal Br. 12; see also id. (asserting that “the computer game in question is not your standard, or commonly available computer game, but a computer game that has been specifically programed to carry out the learning paradigms detailed in Appellant’s application and claims (task-irrelevant learning stimuli and multisensory facilitation (MF) of visual learning)”). This argument is unpersuasive because using the paired stimuli in the video game to improve sensory and perceptual learning represents the abstract idea itself (i.e., “managing Appeal 2021-000487 Application 13/276,529 11 personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”) (2019 Eligibility Guidance, 84 Fed. Reg. at 52) and, thus, does not constitute an additional element beyond the judicial exception. Moreover, Appellant has not provided any specificity regarding any particular inventive technology associated with the additional elements in claim 1. The “computer” element described in the Specification and recited in the claim appears to function in a generic manner. There is no further description, in the claim or the Specification, of any particular technology for performing the steps recited in the claim other than generic computer components used in their ordinary capacity as tools to apply the abstract idea. Nor does the claimed invention use a particular, or special, machine. In other words, the claims “are not tied to any particular novel machine or apparatus” capable of rescuing them from the realm of an abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). In short, the claims do not recite any additional elements that: (1) improve the functioning of a computer or other technology, (2) are applied with any particular machine, (3) effect a transformation of a particular article to a different state, and (4) are applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05(a)–(c), (e)–(h). For the above reasons, we determine that the additional elements recited in independent claim 1 beyond the judicial exception, whether considered alone or in combination, do not integrate the abstract idea into a Appeal 2021-000487 Application 13/276,529 12 practical application. Thus, claim 1 is “directed to” an abstract idea. See 2019 Eligibility Guidance, 84 Fed. Reg. at 53. (4) Step 2B: Does claim 1 add any specific limitations beyond the judicial exception that are not “well-understood, routine, and conventional” in the field? Because we determine that claim 1 fails to recite an additional element or combination of additional elements that integrate the judicial exception into a practical application, in accordance with the 2019 Eligibility Guidance, we next consider whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or instead “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 Eligibility Guidance, 84 Fed. Reg. at 56. Appellant argues that “the elements of the claims when taken individually, and especially when taken as a combination, result in the claim amounting to significantly more than a judicial exception.” Appeal Br. 13. Appellant asserts that, “the Examiner is alleging that Appellant’s claim elements were well-understood, routine, conventional activity in the field without actually providing any factual evidence as such.” Id. According to Appellant, “the claimed methods are novel and nonobvious in view of the state of the art.” Id. at 14. This argument does not apprise us of Examiner error. Here, as discussed above, the additional elements recited in claim 1 that are beyond the abstract idea include an output device, an input device, and a computer. The Examiner determines that the additional elements in the claim are well-understood, routine, and conventional limitations Appeal 2021-000487 Application 13/276,529 13 amounting to no more than instructions to implement the abstract idea on a computer. Final Act. 5. The Examiner also explains that it is customary to use visual and auditory devices to produce a combination of stimuli for a subject who inputs a response. Ans. 6 (citing Rapoza (US 6,561,811 B2, iss. May 13, 2003)). In this regard, Appellant does not persuasively refute the Examiner’s position. Appellant does not point do, nor do we discern, any indication in the record before us that the recited computer invokes any asserted inventive programming, requires any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than conventional computer components operating in their normal, routine, and ordinary capacity. Appellant’s Specification describes that “procedures that currently are used to produce perceptual learning (such as Gabor detections task, motion discrimination tasks, visual search tasks, etc.) can be built into a gaming framework.” Spec. ¶ 4. In other words, as the Examiner explains, the claim merely applies known perceptual learning techniques to a computer game environment. See Ans. 6 (citing to Shane (US 2010/0167255 A1, pub. July 1, 2010) as evidence that using task irrelevant learning procedures with a video game is merely “using a widely accepted state-of-the-art teaching tools {see background section for generating interactive visually-based educational lessons for groups who prefer the permanence of visual stimuli in Shane . . . }”). Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out Appeal 2021-000487 Application 13/276,529 14 conventional processes, with no alteration of computer functionality.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract features of the claimed inventions, alone or in combination, are not well-understood, routine and conventional database structures and activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept.”). For the reasons discussed above, we find no element or combination of elements recited in claim 1 beyond the judicial exception that is not “well- understood, routine, conventional” in the field or that contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. Alice, 573 U.S. at 221. Accordingly, we sustain the rejection of claim 1, and claims 4–13 and 17–34 falling therewith, under 35 U.S.C. § 101 as being directed to patent- ineligible subject matter. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–13, 17–34 101 Eligibility 1, 4–13, 17–34 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED