Ex Parte Botchen

Patent Trials and Appeals Board

May 17, 2019

14321368 - (D) (P.T.A.B. May. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/321,368 07/01/2014
12716 7590 05/21/2019
Marshall, Gerstein & Borun LLP (Google)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
FIRST NAMED INVENTOR
Ralf Botchen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
31730/21376-00 8029
EXAMINER
HOANG, HAU HAI
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
05/21/2019 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALF BOTCHEN
Appeal2018-007920
Application 14/321,368 1
Technology Center 2100
Before JEREMY J. CURCURI, IRVIN E. BRANCH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4--15, and 17-20, which are all of the claims pending in the
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 GOOGLE LLC ("Appellant") is the Applicant, as provided for under 37
C.F .R. § 1.46, and is also identified in the Appeal Brief as the real party in
interest. See Appeal Br. 3.
2 Claims 3 and 16 have been cancelled. See Appeal Br. A-1, A4, Claims
Appendix.
Appeal2018-007920
Application 14/321,368
STATEMENT OF THE CASE
According to Appellant, the claims are directed to "determining
correctly pronounced names based on location in a social networking
environment." Spec. ,r 1. 3 Claim 1, reproduced below, is representative of
the claimed subject matter:
1. A method for generating localized pronunciations of
names, the method comprising:
[a] receiving, at one or more processors, a name of a social
networking participant and an indication of a geographic region
of origin of the social networking participant;
[b] searching, by the one or more processors, a multi-
language book, music, or video entertainment database for an
instance of the name, wherein the multi-language book, music,
or video entertainment database includes a transliteration into a
different type of alphabet corresponding to the geographic region
of origin;
[ c] identifying, by the one or more processors, a
transliterated version of the name in the type of alphabet
corresponding to the geographic region of origin;
[ d] searching, by the one or more processors, at least one
of: the multi-language book, music, or video entertainment
database to identify multimedia content that includes an instance
of the transliterated version of the name vocalized at least near
the geographic region of origin;
[ e] storing, by the one or more processors on a computer-
readable medium, a reference to the vocalized name in a database
record associated with the social networking participant; and
3 This Decision refers to: (1) Appellant's Specification filed July 1, 2014
("Spec."); (2) the Final Office Action mailed February 12, 2018 ("Final
Act."); (3) the Appeal Brief filed May 8, 2018 ("Appeal Br."); (4) the
Examiner's Answer mailed June 14, 2018 ("Ans."); and (5) the Reply Brief
filed August 1, 2018 ("Reply Br.").
2
Appeal2018-007920
Application 14/321,368
[ f] providing, by the one or more processors, the vocalized
name in response to a request for pronunciation of the social
networking participant's name.
REJECTION
Claims 1, 2, 4--15, and 17-20 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 2---6.
Our review in this appeal is limited to the above rejection and the
issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. § 4I.37(c)(l)(iv).
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. Pty. Ltd. 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 Alice, 573
U.S. 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. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
3
Appeal2018-007920
Application 14/321,368
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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 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))). 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 176; 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
has 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. at 191 ( citations
omitted); see also id. at 187 ("It is now 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 tum to the second
step of the Alice and Mayo framework, where "we must examine the
4
Appeal2018-007920
Application 14/321,368
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 ( citations 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). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
USPTO January 7, 2019 Revised Section 1 OJ Memorandum
The USPTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019 ("2019 Guidance"). Under the 2019 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:
(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
5
Appeal2018-007920
Application 14/321,368
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
ANALYSIS
Appellant argues the claims as a group, specifically addressing the
limitations recited in claim 1. See Appeal Br. 13. Accordingly, we focus
our discussion on independent claim 1 as exemplary of Appellant's
arguments for claims 2, 4--15, and 17-20. See 37 C.F.R.
§ 4I.37(c)(1)(iv)(2017).
The Examiner determines "the description in claim 1 of
obtaining/generating localized pronunciation of names for social networking
participant's name is an abstract idea." Final Act. 3. The Examiner also
determines "the additional elements do not amount to significantly more
than the above-identified judicial exception (the abstract idea)." Final
Act. 4.
Appellant presents several arguments against the section 101
rejection. Applying the guidance set forth in the Memorandum, we are not
persuaded of Examiner error for the reasons discussed below. We adopt the
nomenclature for the analysis steps used in the Memorandum.
STEP 1
Section 101 provides that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. Claim 1
recites a method. As such, the claim is directed to statutory classes of
invention within 35 U.S.C. § 101, i.e., a process.
6
Appeal2018-007920
Application 14/321,368
STEP 2A Prong 1
Under Step 2A, Prong 1 of the 2019 Guidance, we must determine
whether the claim, being directed to a statutory classes of invention,
nonetheless falls within a judicial exception.
The Examiner determines claim 1 is directed to an abstract idea. See
Final Act. 2-3. Appellant presents no arguments that claim 1 does not recite
an abstract idea. See Appeal Br. 13-15; Reply Br. 2-5. Nevertheless, we
still analyze the claim under Step 2A, Prong 1 of the Memorandum for
completeness.
Claim 1 recites a "method" including the steps of: [a] "receiving, at
one or more processors, a name of a social networking participant and an
indication of a geographic region of origin of the social networking
participant;" [b] "searching, by the one or more processors, a multi-language
book, music, or video entertainment database for an instance of the name,
wherein the multi-language book, music, or video entertainment database
includes a transliteration into a different type of alphabet corresponding to
the geographic region of origin;" [ c] "identifying, by the one or more
processors, a transliterated version of the name in the type of alphabet
corresponding to the geographic region of origin;" and [d] "searching, by the
one or more processors, at least one of: the multi-language book, music, or
video entertainment database to identify multimedia content that includes an
instance of the transliterated version of the name vocalized at least near the
geographic region of origin;" [e] "storing, by the one or more processors on
a computer-readable medium, a reference to the vocalized name in a
database record associated with the social networking participant;" and [ fJ
"providing, by the one or more processors, the vocalized name in response
7
Appeal2018-007920
Application 14/321,368
to a request for pronunciation of the social networking participant's name."
Appeal Br. A-1.
Apart from extra-solution activity, such as recited in limitations [a]
and [f], the claim recites [b] "searching ... a multi-language book, music, or
video entertainment database for an instance of the name'" [ c] "identifying
... a transliterated version of the name in the type of alphabet corresponding
to the geographic region of origin;" [d] "searching ... at least one of: the
multi-language book, music, or video entertainment database to identify
multimedia content that includes an instance of the transliterated version of
the name vocalized at least near the geographic region of origin;" and [ e]
"storing ... a reference to the vocalized name in a database record."
Limitations [b], [c], [d], and [e], under their broadest reasonable
interpretation, recite a mental process, analogous to a person looking up a
pronunciation of a transliterated version of the name in a paper dictionary or
other reference source, and storing the result. Our reviewing courts have
determined certain claims limited to manipulating information to be abstract.
See Content Extraction and Transmission LLC v. Wells Fargo Bank,
National Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("collecting data, ...
recognizing certain data within the collected data set, and ... storing that
recognized data in a memory."); Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (collecting and comparing known
information); Parker v. Flook, 437 U.S. 584, 98 (1978) (method for
calculating alarm limit values during catalytic conversion processes, in
which only novel feature was mathematical formula, did not describe
patentable subject matter).
8
Appeal2018-007920
Application 14/321,368
Claim 1 's use of a processor for automating mental tasks is an
example of concepts performed in the human mind as mental processes
because the steps mimic human thought processes that could be performed
in the mind or perhaps with paper and pencil. See Bancorp Services, L.L. C.
v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir.
2012), cert. denied, 134 S.Ct. 2870 (2014) ("Using a computer to accelerate
an ineligible mental process does not make that process patent-eligible.");
see also Memorandum n.14 ( citing Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the exception of
generic computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human, mentally
or with pen and paper."). Analyzing information by steps people may go
through in their minds, without more, is essentially a mental process within
the abstract-idea category.
From this we conclude that claim 1 recites a mental process as
provided for in the Memorandum.
STEP 2A Prong 2
Next, we determine whether the claim is directed to the abstract
concept itself or whether it is instead directed to some technological
implementation or application of, or improvement to, this concept, i.e.,
integrated into a practical application. See, e.g., Alice, 573 U.S. at 223,
discussing Diehr, 450 U.S. at 175.
The Examiner determines "[t]here is no improvement to social
networking technology because ... "[t]he present application only uses
subquery to search and retrieve an already-pronounced instance of the name
and link to social user profile." Ans. 5.
9
Appeal2018-007920
Application 14/321,368
Appellant argues "the claimed invention improves social networking
technology by generating name pronunciations in a more accurate manner
through utilizing the geographic region of origin of the name." Appeal
Br. 15.
Appellant's argument is unpersuasive. Claim 1 recites "one or more
processors" to perform each of the steps of the abstract idea discussed above.
However, these recitations, which nakedly call for the execution of the
abstract idea by a computer, are tantamount to nothing more than an
instruction to apply the abstract idea using a generic computer, i.e., adds the
words "apply it," and, as a result, does not render the abstract idea eligible.
Alice, 573 U.S. at 221. The claim only recites a result, not the particular
manner to achieve the result, and, even further, does not recite a technology-
specific manner to achieve the result.
In addition, as the Examiner notes, claim 1 fails to recite a specific
algorithm for "searching, by the one or more processors, a multi-language
book, music, or video entertainment database for an instance of the name."
See Ans. 3. The searching limitations, therefore, fail to recite technological
operations. And because the claims are "not tied to any particular
technology," the claims "can be implemented in myriad ways," e.g., a "low-
tech" manner where a person merely looks up a name pronunciation in a
dictionary.
Other than the abstract idea, claim 1 recites [a] "receiving, at one or
more processors, a name of a social networking participant and an indication
of a geographic region of origin of the social networking participant."
Appeal Br. A-1. Thus, the received name of a social network participant is
merely information that is gathered and used as a basis for the searching.
10
Appeal2018-007920
Application 14/321,368
Such data gathering steps, however, are insignificant extra-solution activity
that is insufficient to render the claim patent-eligible. See In re Bilski, 545
F .3d at 963 ( characterizing data gathering steps as insignificant extra-
solution activity).
Furthermore, we reach a similar conclusion regarding the outputting
of data recited in limitation [ fJ. Appeal Br. A-1. Such outputting of data is
insignificant post-solution activity. Flook, 437 U.S. 584 at 590 ("[t]he
notion that post-solution activity, no matter how conventional or obvious in
itself, can transform an unpatentable principle into a patentable process
exalts form over substance.)
Accordingly, the claim is not directed to a specific asserted
improvement in computer technological implementation or otherwise
integrated into a practical application and thus is directed to a judicial
exception.
STEP 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 218-219 (quoting Mayo,
566 U.S. at 72-73).
The additional limitations of claim 1, apart from the abstract idea, are
generic computing elements performing generic extra-solution activity and,
as a result, do not amount to significantly more than the claimed abstract
idea. See Spec. ,r 19 ("the client device 102 can be any suitable portable or
non-portable computing device."). Merely reciting generic computing
components cannot transform a patent-ineligible abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2358. In other words, merely
11
Appeal2018-007920
Application 14/321,368
reciting an abstract idea while adding the words "apply it with a computer"
does not render an abstract idea non-abstract: there must be more. Id. at
2359.
Appellant argues the "Office has not demonstrated that searching a
database for a transliterated version of a name in a different type of
alphabet corresponding to the geographic region of origin, and then
searching a database for a vocalization of the transliterated version of the
name for generating a name pronunciation is well-understood, routine, and
conventional. Appeal Br. 16 (citing Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018)). The USPTO Berkheimer Memorandum requires a Patent
Examiner to support with factual evidence any allegation that additional
claim elements were well-understood, routine, or conventional, at the time
the invention was filed.
Appellant's argument however, is directed to the claimed abstract
idea, rather than to additional elements [a] or [ fJ in claim 1 and is therefore
unpersuasive. See BSG Tech LLC v. Buyseasons, Inc., 899 F .3d 1281, 1290
(Fed. Cir. 2018) ("It has been clear since Alice that a claimed invention's use
of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention "significantly more" than that ineligible
concept.")
Further, considered as an ordered combination, the generic "one or
more processors" of limitations [a] - [ fJ add nothing that is not already
present when the steps are considered separately. The sequence of
information reception, analysis, and output, performed by the processors, is
generic and conventional or has been otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
12
Appeal2018-007920
Application 14/321,368
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); and Two-Way Media
Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (sequence of processing, routing, controlling, and monitoring).
The ordering of the steps is therefore ordinary and conventional. Considered
both separately and as an ordered combination, the additional limitations add
nothing inventive to the claim.
We, thus, conclude that the claim does not provide an inventive
concept because the additional elements recited in the claims do not provide
significantly more than the recited judicial exception.
Accordingly, claim 1 does not recite patent-eligible subject matter.
Therefore, we sustain the rejection of claims 1, 2, 4, 6-12, 14, 15, and 17-20
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Dependent claim 5
Claim 5 depends from claim 1 and additionally recites "storing the
reference to the vocalized name in a machine-readable knowledge repository
in which data that describes attributes of entities is organized according to
semantic relations between the entities, each entity corresponding to a
geographic region, a name, and having a reference related to a vocalized
instance of the name." Appeal Br. A-2.
The Examiner finds "[t]his step is only storing additional information
(i.e., storing the reference to the vocalized name) in a knowledge repository
(e.g., a database). Storing/adding additional data into a database in not new
in the art. The claim does not have any addition limitation that amount to
significantly more than the abstract idea." Final Act. 5.
13
Appeal2018-007920
Application 14/321,368
Appellant argues "claim 5 improves the functioning of the computer
by utilizing a machine-readable knowledge repository in which data that
describes attributes of entities is organized according to semantic relations
between the entities." Appeal Br. 1 7.
We find Appellant's argument unpersuasive. As discussed with
respect to claim 1, storing of data is insignificant post-solution activity.
Flook, 437 U.S. 584 at 588. Storing of data in a more specific type of
storage is insufficient to demonstrate an improvement in the functioning of
the computer. Accordingly, we sustain the Examiner's rejection of claim 5
Dependent claim 13
Claim 13 depends from claim 10 and additionally recites "wherein at
least some of the entities in the machine-readable knowledge repository
correspond to the geographic region or origin at varying levels of detail."
Appeal Br. A-4.
The Examiner finds "[t]he machine-readable knowledge databased is
similar to the hierarchical geographic database. The claim does not have any
addition limitation that amount to significantly more than the abstract idea."
Final Act. 10.
Appellant argues "[c]laim 13 further increases the accuracy of the
name pronunciation by storing pronunciations that correspond to geographic
regions of origin at varying levels of detail, such as country, continent, state,
city, town, etc." Appeal Br. 18.
We find Appellant's argument unpersuasive. As discussed with
respect to claims 1 and 5, storing of data is insignificant post-solution
activity. Flook, 437 U.S. 584 at 588. Storing of data in a more specific type
of storage is insufficient to demonstrate an improvement in the functioning
14
Appeal2018-007920
Application 14/321,368
of the computer. Accordingly, we sustain the Examiner's rejection of claim
13.
DECISION
We affirm the Examiner's decision to reject claims 1, 2, 4--15, and
17-20 under 35 U.S.C. § 101.
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.
§ 4I.50(f).
AFFIRMED
15