Ex Parte Hewett

Patent Trial and Appeal Board

Jul 30, 2018

13412246 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/412,246 03/05/2012
26948 7590 08/01/2018
VENJURIS, P.C.
1938 E. OSBORN RD
PHOENIX, AZ 85016-7234
FIRST NAMED INVENTOR
Adam S. Hewett
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.
PHRE0996-005 1597
EXAMINER
HUMPHREY, MICHAEL C
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
docketing@venjuris.com
vclmdocket@venjuris.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM S. HEWETT 1
Appeal 2017-004391
Application 13/412,246
Technology Center 3700
Before GEORGE R. HOSKINS, BRANDON J. WARNER, and
LEE L. STEP INA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1---6. We have jurisdiction under35 U.S.C. §6(b).
We AFFIRM.
1 Appellant's Appeal Brief lists Adam S. Hewett and Vitrepixel Holdings,
LLC as the real parties in interest. Br. 3.
Appeal 2017-004391
Application 13/412,246
CLAIMED SUBJECT MATTER
The claims are directed to a method for enhanced memorization and
retention of consecutive text using spaced repetition, mnemonics, and
adaptation to the user. Spec. ,r 1. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for enhanced memorization of a body of text,
the method comprising the steps of:
dividing an entire body of text into at least two sub-parts
using a microprocessor, wherein when the sub-parts are joined
together they represent the entire body of text, wherein each sub-
part comprises at least two words, and wherein the at least two
subparts comprising a first sub-part and a second sub-part;
saving the sub-parts to a database;
associating a different mnemonic aid with each of the sub-
parts;
in a user memorization module, serially presenting at least
two sub-parts of text to a user for memorization, each sub-part
comprising a problem indicator button for receiving input from
the user regarding whether the user request help with the
sub-part, the serial presenting controlled in real-time by
commands from the user and permitting the user to progress
backwards and forwards sequentially through the entire body of
text without stopping;
applying an algorithm, using a microprocessor to
determine whether additional sub-parts of text should be
presented for memorization;
and, scheduling in the future at least one recall review
session based on the algorithm results, the recall review session
comprising at least two sub-parts in consecutive sequential order.
Br. 29-30 (Claims App.).
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Appeal 2017-004391
Application 13/412,246
REJECTION
Claims 1---6 arerejectedunder35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2.
OPINION
In Alice, the Supreme Court applied the framework set forth
previously in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289(2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
S. Ct. 2347, 2355 (2014). The frrst step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts." Id. If so, the second step in the analysis is to consider the
elements of the claims "individually and 'as an ordered combination' to
determine whether [there are] additional elements" that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
132 S. Ct. at 1297).
Step 1
The Examiner determined that claims 1---6 are directed to an abstract
idea, namely, "dividing data and classifying it and determining options by
applying rules to known data." See Final Act. 3-5.
Appellant does not present arguments in relation to Step 1 of the Alice
framework. See Br. 17-18. Specifically, in relation to the inquiry as to
whether the claims are directed to an abstract idea, Appellant summarizes
the steps recited in various claims and concludes, "the claim is directed to at
least one exception." Id. at 18.
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Application 13/412,246
Step2
Appellant does not contend that any single element recited in the
claims adds the kind of inventive concept that would transform the abstract
idea into a patent-eligible invention. See Br. 18-19. Rather, Appellant's
argument focuses on whether the claimed elements, taken as an ordered
combination, require something significantly more than the above-noted
abstract idea. Id. at 19-27. In support of this argument, Appellant lists
certain recitations of claims 1-3 and asserts that "[t]he totality of the steps
[in claims 1-3] act in concert to improve another technical field, specifically
the field of speech memorization, by controlling how quickly a user [is]
presented with larger and larger blocks of text -- both in a real time and over
time." Id. at 19-20 (emphasis added). 2
Appellant's argument on this point is unavailing. We do not agree
that an improvement in the field of speech memorization, on the facts of this
case, is the kind of improvement that imparts patent eligibility. As
Appellant acknowledges, "the claim limitations of performing repetitive
calculations and comparisons could be performed by a human using mental
steps or basic critical thinking, which are types of activities that have also
been found by the courts to represent abstract ideas." Br. 18. Appellant's
statement is consonant with the Specification, which states, "The present
invention is an assisted learning method, and although many highly effective
assisted learning methods exist, none have touched on a more effective way
2 Appellant does not indicate that this argument is intended to apply to any
particular claim. See Br. 18-20. As neither claim 1 nor dependent claim 2
recites all the elements referred to by Appellant, we understand this
argument to apply to claim 3, which depends from claim 2, and, thus,
requires all the elements presented in this portion of Appellant's argument.
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Appeal 2017-004391
Application 13/412,246
to memorize large, consecutive bodies of text verbatim." Spec. ,r 2.
Appellant provides no persuasive argument as to why such a process, as set
forth in claims 1---6 and described in the Specification, qualifies as a
"technical field" in the context of step 2 of the Alice test, and we do not
think it is one. See Alice, 134 S. Ct. at 2359---60. Rather, the regimen for
presenting text to a user set forth in claims 1---6 is similar, in concept, to the
subject matter it issue in Elec. Power Grp., LLCv. Alstom S.A., 830 F.3d
1350, 1353-54 (Fed. Cir. 2016) (holding that "collecting information,
analyzing it, and displaying certain results of the collection and analysis" are
"a familiar class of claims 'directed to' a patent-ineligible concept," and
explaining that the claims were not patent eligible because "[t]he advance
they purport to make is a process of gathering and analyzing information of
a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions").
That the claims are for the stated purpose of enhancing memorization
of a body of text does not change that the claims are directed to an abstract
idea. As the Supreme Court has said, "if a claim is directed essentially to a
method of calculating, [ (here, for example, determining based on an
algorithm)], even if the solution is for a specific purpose, the claimed
method is nonstatutory." Parkerv. Flook, 437U.S. 584,595 (1978)
(quoting In re Richman, 563 F.2d 1026, 1030 (CCPA 1977)). "The Supreme
Court and this court have repeatedly made clear that merely limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract." Affinity Labs of
Texas, LLCv. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016).
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Application 13/412,246
Appellant also contends, "the claimed steps taken as a combination
effect a transformation of known parts into a specific solution. Thus, the
claim amounts to significantly more than the use of mnemonic and spaced
repetition." Br. 20 ( emphasis added).
To the extent Appellant asserts that the "claimed steps" result in a
"transformation" under the "machine-or-transformation" test (see In re
Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008)), and the claims are therefore
patent eligible, we disagree for the following reasons. Our reviewing court
explained the machine-or-transformation test as follows, "[a] claimed
process is surely patent-eligible under§ 101 if: (1) it is tied to a particular
machine or apparatus, or (2) it transforms a particular article into a different
state or thing." Id. The Supreme Court stated, although the machine-or-
transformation test may be a useful and important clue or investigative tool,
it is not the sole test for deciding whether an invention is a patent-eligible
"process"under § 101. Bilskiv. Kappas, 130 S. Ct. 3218, 3226-27 (2010).
Thus, the machine-or-transformation test is helpful in the patent-eligibility
analysis, but the outcome of this test is not necessarily dispositive of the
patent-eligibility question.
Further, we do not agree with Appellant's contention regarding the
alleged transformative effect of"the claimed steps." Br. 20. The beneficial
result produced by the method recited in claims 1---6 is not the kind of
transformation that imparts patent eligibility under the machine-or-
transf ormation test because the claimed method does not physically
transform anything. The fact that the recited method may provide an
educational benefit or solution, as Appellant alleges, is not the same thing as
a "transformation" under the machine-or-transformation test.
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Appeal 2017-004391
Application 13/412,246
To the extent Appellant's argument regarding the "transformation of
known parts into a specific solution" (Br. 20) is intended to address the
second step in the Alice analysis, we disagree with Appellant because the
second step in this analysis is the "search for an 'inventive concept '-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Alice, 134 S. Ct. 2347, 2355 (quoting Mayo,
132 S. Ct. at 1294). The fact that the claimed method may provide a benefit
or solution, as Appellant alleges, is a different question from whether the
elements of the claim amount to significantly more than claiming the patent
ineligible concept. We do not see the particular order of the recited method
steps to be anything other than a conventional use of known computer
equipment.
Appellant repeatedly quotes portions of the claims on appeal and
asserts that the benefit provided by ( or novelty of) the claimed subject matter
renders the claims patent-eligible. See Br. 23-27 ( quoting portions of claims
1, 2, and 6). For example, with respect to claim 1, Appellant states, "These
three sub elements are significant because they allow a user to do something
that that could not be done without this invention: practice a speech and note
(in real time and without stopping) the places where the user struggled
through the on-screen problem indicator 407." Id. at 24 ( emphasis omitted).
As discussed above, we do not agree that the provision of a benefit, alone,
imparts patent eligibility. As for the alleged novelty of the claimed subject
matter, novelty and patent-eligibility are different inquiries. See Mayo, 132
S. Ct. 1289 at 1304; see also Diamondv. Diehr, 101 S. Ct. 1048, 1058
(1981) ("The 'novelty' of any element or steps in a process, or even of the
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Application 13/412,246
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 have considered all of Appellant's arguments regarding
claims 1---6, but determine the Examiner has the better position. We sustain
the Examiner's rejection of claims 1---6 as being directed to patent-ineligible
subject matter.
DECISION
The Examiner's rejection of claims 1---6 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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