Ex Parte Cordell

Patent Trials and Appeals Board

Feb 28, 2019

14738602 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/738,602 06/12/2015 Jeffrey Cordell
65449 7590 03/04/2019
PATENT INGENUITY, P.C.
9701 Wilshire Boulevard
Suite 1000
Beverly Hills, CA 90212
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.
LLS-0340-US 1024
EXAMINER
LELAND III, EDWIN S
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
03/04/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ssimpson@patentingenuity.com
patents@patentingenuity.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY CORDELL
Appeal2018-006014
Application 14/738,602 1
Technology Center 2600
Before ELENI MANTIS MERCADER, JASON J. CHUNG, and
BETH Z. SHAW, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Language Line
Services, Inc. App. Br. 2.
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Application 14/738,602
CLAIMED SUBJECT MATTER
The claims are directed to a multi-channel cross-modality system for
providing language interpretation/translation services. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A computer implemented language interpretation/translation
platform comprising:
a receiver that receives, via a network, a request for
computerized interface data from a computing device and
receives, via the network, a plurality of interface data from a
plurality of distinct language interpretation/translation
platforms, each of the plurality of distinct language
interpretation/translation platforms providing a language
interpretation/translation service according to a distinct
modality from each other such that each distinct modality is
based on a distinct channel for a distinct form of delivery of the
language interpretation/translation service by a human language
interpreter/translator;
a processor that automatically aggregates the plurality of
interface data from the plurality of distinct language
interpretation/translation platforms in real-time, as measured
from a time that the request was received to a subsequent time
without a perceivable time delay, into a computerized interface
format; and
a transmitter that sends, via the network, the
computerized interface format to the computing device for
display by the computing device so that the computing device
receives a selection of an optimal language
interpretation/translation service.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hess
Wang
US 2005/0086044 Al
US 2009/0204389 Al
2
Apr. 21, 2005
Aug. 13, 2009
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Application 14/738,602
Chary
Kidwai
US 2013/0085881 Al Apr. 4, 2013
US 2016/0019205 Al Jan. 21, 2016
Interpretation, Transperfect,
https ://www. trans perfect. com/ services/interpretation.html (last
visited Aug. 10, 2017) (hereinafter "Transperfect").
Language Innovations, Yelp,
https ://www.yelp.com/biz/language-innovations-
washington? osq=interpreter (last visited May 26, 2016)
(hereinafter "Yelp").
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with written description requirement.
Claims 1-20 stand rejected under 35 U.S.C. § 112, second paragraph
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor regards as the invention.
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.
Claims 1--4, 7-8, 10, 12-16, and 19-20 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Hess in view of Kidwai and further view
of Transperfect.
Claims 5---6 and 17-18 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Hess in view of Kidwai and Transperfect and
further in view of Chary.
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Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hess in view of Kidwai and Transperfect and further in
view of Yelp.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hess in view of Kidwai and Transperfect and further in
view of Wang.
OPINION
Except where indicated, we adopt the Examiner's findings in the
Answer and Final Office Action and we add the following primarily for
emphasis. We note that if Appellant failed to present arguments on a
particular rejection, we decline to review unilaterally those uncontested
aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI
2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir.
2008) (the Board may treat arguments Appellant failed to make for a given
ground of rejection as waived).
Claims 1-20 rejected under 35 U.S.C. § 112,first paragraph
The Examiner rejected claims 1-20 under the written description
requirement finding that the claimed terminology of "aggregates the
plurality of interface data ... in real-time, as measured from a time that the
request was received to a subsequent time without a perceivable time delay,"
is not defined anywhere in the Specification ( emphasis added). See Final
Act. 3. The Examiner, in particular, finds that there is no written description
support for the definition in amended claims 1 and 13 of "real time, as
measured from a time that the request was received to a subsequent time
without a perceivable time delay." Id.
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Appellant responds:
Thus, one of ordinary skill in the art would not require
additional definition in the Specification ( as explained by MPEP
Section 2163.02) to understand that the term "real time" refers to
" ... , as measured from a time that the request was received to a
subsequent time without a perceivable time delay." For example,
the instant Specification states that "[t]he computerized interface
allows the user to obtain a real-time or near real-time set of data
that helps the user determine which interpretation/translation
service is the most optimal based upon the customer's current
interpretation/translation needs ( emphasis added)."
Specification, para. [0017]. Measuring real-time without a
perceivable time delay is consistent with determining an optimal
interpretation/translation service based upon the customer's
current interpretation/translation needs.
Conversely, if a perceivable delay was present, the
computerized interface may not be able to aggregate data quickly
enough for the customer's current interpretation/translation
needs as the data can have "significant fluctuations"
(Specification, para. [0017]). Accordingly, the plain and
ordinary meaning of "real time," as specified in claim 1, is
consistent with the instant Specification.
App. Br. 6.
Appellant's characterization of the term real-time, pertaining to a
response time "based upon the customer's current
interpretation/translation needs" is consistent with the customary
definition defined, in pertinent part, as "Real-time operations are
characteristic of aircraft guidance systems, transaction-processing systems,
scientific applications, and other areas in which a computer must respond to
situations as they occur (for example, animating a graphic in a flight
simulator or making corrections based on measurements)." Microsoft
Computer Dictionary, Fifth Edition, p. 441 ( copyrighted 2002). Claim terms
are presumed to have their customary and ordinary meaning unless there is
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an express intention to impart the novel meaning of the claim terms.
SunRace Roots Enterprise Co. v. SRAM Corp., 336 F.3d 1298, 1302 (Fed.
Cir. 2003).
Accordingly, one skilled in the art would know that "real time" as it
pertains to the claimed limitation "interpretation/translation platforms in
real-time, as measured from a time that the request was received to a
subsequent time without a perceivable time delay" means providing the
aggregated data of interpretation/translation platforms to address the
customer's current need. While the Examiner questions the degree of
response to a particular number of milliseconds (see Ans. 18), one skilled in
the art would recognize that "real-time" in the context of computer
applications means almost simultaneously. We also do not agree with the
Examiner's finding of new matter (Ans. 19) because, again, one skilled in
the art would recognize that this automatic aggregation using computer
technology would mean almost simultaneous response.
Thus, we do not sustain the Examiner's rejection of claims 1-20 under
35 U.S.C. § 112, first paragraph.
Claims 1-20 rejected under 35 U.S.C. § 112, second paragraph
The Examiner rejected claims 1-20 as vague and indefinite because
the term "in real time" is used in the claims without defining the
term in the specification, leading to uncertain bounds for the
limitations and rendering the claims indefinite. While the
addition of "as measured from a time that the request was
received to a subsequent time without a perceivable time delay",
establishes a starting point for "in real time", there is no definite
end point as it is unclear who or what is perceiving the time delay
and the minimum quantity of time that it/they can perceive, thus
the claims are still indefinite.
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Final Act. 3.
We do not agree with the Examiner's finding because as we stated
supra, one skilled in the art would know that in the realm of the
interpretation/translation platforms to address the customer's current need in
the context of computer technology, it would mean the time response of
almost simultaneous! y.
Accordingly, we do not sustain the Examiner's rejection of claims 1-
20 as vague and indefinite.
Claims 1-20 rejected under 35 U.S.C. § 1 OJ
Appellant argues that the claims are directed to an improvement of
computer functionality. App. Br. 9. In particular, Appellant argues that
"[t ]he multi-channel cross-modality system improves the functionality of a
computer by providing more information than previous systems to a user so
that the computer can select the most optimal interpretation/translation for
the user based upon a user input, an automatically generated
recommendation, or an automatic determination." Id. Appellant further
argues that one of ordinary skill in the art would understand that displaying
more information in one computerized interface would involve smaller
memory requirements for a computer than having to display multiple
computerized interfaces. Id.
We are not persuaded by Appellant's argument. 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'!, 573 U.S. 208,216 (2014).
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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.").
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, 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 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
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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
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
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 (internal 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).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupmgs of
abstract ideas (i.e., mathematical concepts, certain methods of
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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 Manual of Patent Examining
Procedure (MPEP) § 2106.0S(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 § 2106.0S(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 Memorandum.
In the instant case, claim 1, as a whole, recites computer implemented
platform of a mental process that can be performed in the mind. In
particular, claim 1 allows aggregating information regarding available
interpretation/translation services in response to a request. This limitation,
as drafted under its broadest reasonable interpretation, covers performance
of the limitation in the mind or by a human using a pen and paper but for the
recitation of generic computer components. That is, other than reciting a
"network" and a "processor" at a high level of generality, nothing in the
claim precludes performing the aggregation of the information in the mind
or by a human using a pen and paper. Furthermore, the "aggregates the
plurality of interface data from the plurality of distinct language
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interpretation/translation platforms in real-time" and "display by the
computing device so that the computing device receives a selection of an
optimal language interpretation/translation service" language encompasses
for example the user manually recording the available
interpretation/translation services from various media sources available
through the internet and displaying them on a piece of paper for a requester.
Thus, the claim recites a mental process executed on a computer
implemented platform.
Because the claims recite an apparatus executing a mental process
under Alice step 1, prong 1, we proceed to Alice step 1, prong 2-i.e., we
determine whether the mental process is integrated into a practical
application.
Here, the network, the processor, the computing device, and the
computerized interface are recited at a high level of generality, i.e., as a
generic processor and user interface performing a generic computer function
of processing data (receiving information regarding interpretation/translation
services, aggregating the information, and displaying such information).
This generic processor limitation is no more than mere instructions to apply
the exception using a generic computer component. The mere nominal
recitation of a generic computing device and the use of a processor to
aggregate the data into a computer listing for display does not take the claim
limitation out of the mental processes grouping. As explained in OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015),
"relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible." See also Alice,
573 U.S. at 224 ("use of a computer to create electronic records, track
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multiple transactions, and issue simultaneous instructions" is not an
inventive concept). "[I]nterchangeability of certain mental processes and
basic digital computation ... help explain why the use of a computer in an
otherwise patent-ineligible process for no more than its rnost basic function
... fails to circumvent the prohibition against patenting abstract ideas and
mental processes." Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). In other words, "[u]sing a
computer to accelerate an ineligible mental process does not make that
process patent-eligible." Bancorp Servs, 687 F.3d at 1279. "Simply adding
a 'computer aided' limitation to a claim covering an abstract concept,
without more, is insufficient to render the claim patent eligible."
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
The additional elements of the claim form part of the recited abstract
ideas and thus are not "additional elements" that "'transform the nature of
the claim' into a patent-eligible application." Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78); see also 2019 Eligibility Guidance, 84 Fed. Reg. at
55 n.24 ("USPTO guidance uses the term 'additional elements' to refer to
claim features, limitations, and/or steps that are recited in the claim beyond
the identified judicial exception." ( emphasis added)). Thus, the additional
elements do not integrate the abstract idea into a practical application
because they do not impose any meaningful limits on practicing the abstract
idea.
Moreover, the additional elements of generic components or mere
instructions executed by generic components do not provide an inventive
concept. Appellant's Specification describes using generic components such
as "a general purpose computer or any other hardware equivalents" and
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"[t ]he processes ... may be implemented in a general, multi-purpose or
single purpose processor." Spec. ,r,r 38, 49. Appellant's Specification
recites "a computer may be a PC, laptop computer, set top box, cell phone,
smartphone, tablet device, portable media player, video player, etc." Id. ,r
50. Thus, Appellant's Specification demonstrates that the additional
elements are well-understood, routine, or conventional.
Accordingly, claim 1 is directed to an abstract idea without
significantly more. Similarly, claims 2-20 are directed to an abstract idea
without significantly more for the same reasons set forth above. Thus, we
sustain the Examiner's rejection of claim 1 and, for the same reasons, the
Examiner's rejections of claims 2-20.
Claims 1-20 rejected under 35 U.S.C. § 103(a)
Appellant argues that claim 1 recites "real-time, as measured from a
time that the request was received to a subsequent time without a
perceivable time delay, into a computerized interface format," and the Final
Office Action has not demonstrated any rationale for why the actual claim
recitation is an obvious result from Hess. App. Br. 11. Appellant further
argues that "a prior generation personal computer may not have had the
processing power needed to determine an optimal solution for a user's
current interpretation/translation needs as the personal computer may have
taken several minutes or hours to aggregate the interface data." Id.
We do not agree. The Examiner finds, and we agree, that "as fast as
the computer is able" was adopted as the interpretation for "real time, as
measured from a time that the request was received to a subsequent time
without perceivable time delay, into a computerized interface format." Ans.
25. Since Appellant utilizes a general purpose computer or any other
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hardware equivalents for this invention rather than specially designed
hardware optimized for this task (see paragraph 38 of the Specification), if
additional performance was required, then it would be obvious for a person
having ordinary skill in the art to try using a faster processor, since there are
a limited number of commercially available processors to choose from. 2 Id.
Therefore, we agree with the Examiner's finding that Hess suggests the
limitation "real time, as measured from a time that the request was received
to a subsequent time without perceivable time delay, into a computerized
interface format" as required by claim 1.
Furthermore, Appellant admitted that "real-time" would be the time
that addresses the user's current need for a translation service. See App, Br.
6. Thus, the Examiner broadly but reasonably relied on Hess paragraphs'
34--36, teaching the automatic generation of a list of candidates for
translations services to a user as meeting the real-time limitation (Final Act.
7-8), because this is performed to address the user's current needs,
otherwise there would be no reason to aggregate the services for the user.
Accordingly, we sustain the Examiner's rejection of claim 1 and for
the same reasons the rejections of claims 2-20.
DECISION
We reverse the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 112, first paragraph.
2 The Examiner references paragraph 72, but this appears to be an
inadvertent error, because there is no paragraph 72 in the Specification and
the reference to a general purpose computer appears in paragraph 3 8.
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We reverse the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 103.
Because we affirm on at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject claims 1-
20. See 37 C.F.R. § 4I.50(a)(l).
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)(l )(iv).
AFFIRMED
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