Ex Parte NISSAN

Patent Trials and Appeals Board

Jun 18, 2019

14736282 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/736,282 06/11/2015
49443 7590 06/20/2019
Pearl Cohen Zedek Latzer Baratz LLP
1500 Broadway
12th Floor
New York, NY 10036
FIRST NAMED INVENTOR
MaorNISSAN
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.
P-78789-US 4768
EXAMINER
YANG,QIAN
ART UNIT PAPER NUMBER
2668
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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):
USPTO@PearlCohen.com
Arch-USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAOR NISSAN
Appeal 2017-011039
Application 14/736,282 1
Technology Center 2600
Before HUNG H. BUI, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Non-Final Rejection of claims 1-13, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
Oral arguments were heard on June 10, 2019. A transcript of that hearing
will be added to the record in due time.
We REVERSE. 2
1 According to Appellant, the real party in interest is Nexidia, Inc. App.
Br. 1.
2 Our Decision refers to Appellant's Appeal Brief ("App. Br.") filed June
20, 2017; Reply Brief ("Reply Br.") filed August 28, 2017; Examiner's
Answer ("Ans.") mailed August 3, 2017; Final Office Action ("Final Act.")
Appeal 2017-011039
Application 14/736,282
STATEMENT OF THE CASE
Appellant's invention relates to "automatic selection of a language
model in speech to text (TTS) systems [ used to generate a transcript of an
audio input]." Spec. ,-J 1; Abstract.
Claims 1, 7, and 8 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below:
1. A computer-implemented method of generating a
transcript of an audio input, the method comprising:
generating a phonetic lattice by decoding the audio input;
producing a transcription based on the phonetic lattice and
based on a first language model;
associating words identified in the transcription with a
certainty value calculated for each identified word;
including words associated with a certainty value higher
than a first threshold value in a combined index;
selecting, from a plurality of language models and based
on the combined index, a second language model; and
generating a second transcription of the audio input based
on the phonetic lattice and using the second language model.
App. Br. 13 (Claims App'x).
EXAMINER'S REJECTI0N3
Claims 1-13 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., an abstract idea)
without significantly more. Final Act. 2-4.
mailed February 24, 2017; and original Specification ("Spec.") filed June 11,
2015.
3 Claims 8-13 were also rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter, i.e., the term
"computer readable storage medium" can be interpreted as "a carrier wave
signal" and, as such, "fails to fall within a statutory category of invention."
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Application 14/736,282
ANALYSIS
In support of the rejection of claims 1-13 under 35 U.S.C. § 101, the
Examiner determines the claims are directed to "generating a transcript of an
audio input" including "procedures/steps" that can be implemented mentally
or performed manually by a human with pen and paper, i.e., "a person
listen[ing] an audio signal, decipher[ing] into a transcription with a first
model, selecting high certainty words, using the combined high certainty
words to select a second model, and using the second model to further
decipher into a transcription audio signal into a second transcription" and, as
such, an abstract idea. Final Act. 3; Ans. 6. The Examiner also determines
additional elements in the claims, whether taken separately or in an ordered
combination, do not amount to significantly more than an abstract idea,
because (i) the additional elements (i.e., a computer) are recited at a high
level of generality and perform "generic computer functions that are well-
understood, routine and conventional activities"; and (ii) "[t]here is no
indication that the combination of elements improves the functioning of a
computer or improves any other technology." Final Act. 4; Ans. 2-3.
Legal Framework
To determine whether claims are patent eligible under§ 101, we apply
the U.S. Supreme Court's two-step framework articulated in Alice Corp. v.
CLS Banklnt'l, 573 U.S. 208 (2014). First, we determine whether the
Final Act. 4-5. Appellant filed a Supplemental Amendment on May 5,
2017, which amended claim 8 to define the term "computer-readable storage
medium" as "non-transitory" to overcome the rejection. The Examiner did
not address this rejection in the Examiner's Answer. However, we consider
the rejection to have been withdrawn and will not address this rejection on
appeal.
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Application 14/736,282
claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Id. at 216-17. If so, we then proceed to the
second step 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. at 217 ( citation omitted). In other words, the second step is to "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."' Id. at 217-218 (alteration
in original).
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
However, the abstract idea itself cannot supply the inventive concept, "no
matter how groundbreaking the advance." SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1170 (Fed. Cir. 2018).
Because there is no single definition of an "abstract idea" under Alice
step 1, the Federal Circuit has adopted the common law, analogy-driven
approach (i.e., the "analogous claim" test) to determine whether a claim is
directed to an abstract idea, and has instructed us "to examine earlier cases
in which a similar or parallel descriptive nature can be seen-what prior
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Application 14/736,282
cases were about, and which way they were decided." Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec.
Power Grp., 830 F.3d at 1353-54).
The Office sought to apply the Federal Circuit's common law
"analogous claim" test in the aftermath of Alice (see USPTO Memorandum,
July 2015 Update: Subject Matter Eligibility 3 (July 30, 2015), https://www.
uspto.gov/sites/default/files/documents/ieg-july-2015-update.pdf ("a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea")). Recently,
however, the Office published revised guidance interpreting governing case
law and establishing a framework to govern all patent-eligibility analysis
under Alice and§ 101 effective as of January 7, 2019. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (Jan. 7,
2019) ("Revised Guidance").
Revised Guidance
Under the Revised Guidance, we first look under Alice step 1 or "Step
2A" to whether the claim recites:
(l)Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes, or [iii] certain methods of organizing
human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions
between people); and
(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
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Application 14/736,282
Examining Procedure ("MPEP") §§ 2106.05(a)-( c ), ( e )-
(h)).4
See Revised Guidance, 84 Fed. Reg. at 51-52, 55, Revised Step 2A, Prong
One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: ( 1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an "inventive concept" under Alice step 2 or
"Step 2B." See Revised Guidance at 56; Alice, 573 U.S. at 217-18.
Alice/May~tep 1 (Abstract Idea)
Step 2A-Prongs 1 and 2 identified in the Revised Guidance
Turning to the first step of the Alice inquiry, Appellant argues the
claims are not directed to an abstract idea because ( 1) "the claimed process
is not performed by human intelligence or mental processes, and as claimed
is not mental activity"; instead, "all operations are implemented by a
computer" as recited in independent claims 1, 7, and 8; and (2) like the
claims in McRO, (i) "[t]he claims on appeal generate a transcript of an audio
input in a manner different from how a human would do so, and may
perform better than a human would perform" because "[a] human would not
use a phonetic lattice, certainty value, or index as claimed" and "a first
model and then select a second model, as claimed"; and (ii) "[t]he claims
improve technology ... [via] an ordered series of technical operations to
solve a technical problem: a technical solution is needed to allow a computer
to produce output a human might produce, in a manner different from how a
human brain would produce the solution." App. Br. 4-7 ( emphasis omitted)
4 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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Application 14/736,282
(citing McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed.
Cir. 2016) ). According to Appellant,
[t]he operations of claim 1, for example generating a phonetic
lattice, associating words with a certainty value, and selecting a
language model, fit this definition and thus are technology [ as
technology can be defined as, for example, "the use of science in
industry, engineering, etc., to invent useful things or to solve
problems"]. As discussed, the present claims improve the long-
standing technology of automated speech processing.
App. Br. 7-8.
Appellant also argues:
"[t]he claims are clearly rooted in a computer system and
technology, e.g. '[a] computer-implemented method of
generating a transcription of an audio input' and 'including
words associated with a certainty value higher than a first
threshold value in a combined index,' and are not merely an idea
standing alone such as an uninstantiated concept, plan or scheme,
or a mental process."
Reply Br. 6.
In response, the Examiner takes the position that: ( 1) limitations
recited in Appellant's claims 1, 7, and 8 are similar to limitations of (i)
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding that "[t]he concept of data
collection, recognition, and storage" is not patent-eligible) and (ii) Elec.
Power Grp, 830 F.3d at 1354 (holding that "a process of gathering and
analyzing information of a specified content, then displaying the results" is
not patent-eligible); (2) unlike McRO where "the claims were directed to an
improvement in computer-related technology (allowing computers to
produce 'accurate and realistic lip synchronization and facial expressions in
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Appeal 2017-011039
Application 14/736,282
animated characters' that previously could only be produced by human
animators)," "the claims on appeal were not directed to an improvement in
computer-related technology"; and (3) lastly, "the improvements were not
explicitly stated in the claims." Ans. 7-13 (emphasis omitted).
We do not agree with the Examiner's positions. At the outset, we
note the Federal Circuit has interpreted Alice step 1 as asking "whether the
claims are directed to an improvement to computer functionality versus
being directed to an abstract idea." Enfish, 822 F.3d at 1335. The Federal
Circuit has also "emphasized that the key question is 'whether the focus of
the claims is on the specific asserted improvement in computer
capabilities."' Visual Memory LLC v. Nvidia Corp., 867 F.3d 1253, 1258
(Fed. Cir. 2017).
In McRO, however, the Federal Circuit also indicated the
improvement need not be in the functioning of the computer itself; rather,
the improvement can also be subjective in terms of computer tools ( e.g.,
computer animation, user interface), user experiences, and results. For
example, McRO's invention does not make the computer operate faster, use
less memory, or improve any other parameter of the computer. Instead,
McRO's invention aids in the technological goal of generating computer
animation, i.e., enables human animators to animate 3-D characters more
quickly and easily. McRO, 837 F.3d at 1303. Accordingly, the Federal
Circuit concluded McRO's claims, albeit a pure software-based invention,
i.e., an "algorithm" using a specific set of rules that define "output morph
weight set stream as a function of phoneme sequence and time of said
phoneme sequence" to achieve lip synchronization and facial expressions in
animated characters, are patent eligible under § 101 and, as such, are not
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Application 14/736,282
"directed to" an abstract idea because these claims are directed to a
"technological improvement over the existing, manual 3-D animation
techniques" that uses "limited rules in a process specifically designed to
achieve an improved technological result in conventional industry practice."
Id. at 1310, 1316.
Contrary to the Examiner's characterization, Appellant's claims are
more than mere "data collection, recognition, and storage" as discussed in
Content Extraction or "gathering and analyzing information of a specified
content, then displaying the results" as discussed in Electric Power Group.
See Ans. 6. Instead, Appellant's Specification and claims seek to improve a
computer transcription technology by (1) "generating a phonetic lattice by
decoding the audio input;" (2) "producing a transcription based on the
phonetic lattice and based on a first language model;" (3) "associating words
identified in the transcription with a certainty value calculated for each
identified word;" ( 4) "including words associated with a certainty value
higher than a first threshold value in a combined index;" (5) "selecting, from
a plurality of language models and based on the combined index, a second
language model;" and (6) "generating a second transcription of the audio
input based on the phonetic lattice and using the second language model" in
order to produce more accurate transcript and reduce word error rate. Spec.
,i,i 28, 41, 75.
For example, Appellant's Figure 2 shows a system for converting
audio into text using a selected language model, as reproduced below:
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Appeal 2017-011039
Application 14/736,282
210
?
~)))
FINAL
TRANSCRlPTK)N
(
270
FIG. 2
~
ACOUSTIC
DECODER
"f"""""'f"""""""
( I
........... l",.
:
PHONETlC
LATTICE
~
SELECTED
,l
,<
' 241
(
Lt,i
. ,..
DECODER
.........
"""""""f'"""""'"
227•v....... TRANSCRIPTION
25'1·-·,, STRUCTURED DAT.A
~tti.TCH!NG
UNIT
LANGUAGE
fAODEL i
LANGUAGE
M0DEL2
LANGUAGE
f,/ODEL N
250
As shown in Figure 2, audio content (e.g., a recorded or live
conversation) is decoded, via acoustic decoder 215 using an acoustic model
to produce phonetic lattice 217 and then language model (LM) decoder 220
using a main language model to produce a transcription of the audio content,
e.g., a transcription of a call. A transcription of audio content produced
using a dictionary is then indexed by indexing unit 230 to provide an
indexed and/or structured data object 231. See Spec. ,-J 37. Indexed or
structured data 231 may be provided as input to matching unit 240 to match
indexed data with a plurality or set of language models 250. See Spec. ,-J 38.
Based on the matching, one language model may be selected and a selected
language model is then used on the original or input audio content in order
to produce a final transcription of the audio content. See Spec. ,-J,-J 31-41.
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Application 14/736,282
Paragraph [28] of Appellant's Specification describes "using an
automated language model selection, embodiments of a system and method
according to the invention reduce the word error rate by using specific small
dictionaries (thus overcome the 'large dictionary' problem) without
suffering from OOV within the dictionary (thus overcome the 'too small
dictionary' problem." Similarly, paragraph [41] of Appellant's Specification
describes lowering error rate and out-of-vocabulary error rate when
compared to the prior computer transcription technology.
We agree with Appellant's arguments that (1) the steps recited in
claims 1, 7, and 8 cannot be performed solely in a person's mind; and (2)
"[a] human would not use a phonetic lattice, certainty value, or index as
claimed" and "would not use a first model and then select a second model,
as claimed" in order to produce more accurate transcripts and reduce word
error rate. App. Br. 6. Under the "mental steps" doctrine, a patent claim
that can be performed solely in a person's mind or by pen and paper is
considered an "abstract idea" and, as such, is patent ineligible under § 101.
For example, in Benson, the Supreme Court held a number-conversion
method using a mathematical algorithm is patent ineligible under § 101
because the conversion "can be done mentally" and "without a computer."
See Gottschalk v. Benson, 409 U.S. 63, 67 (1972). These "mental
processes-or processes of human thinking-standing alone are not
patentable even if they have practical application." In re Comiskey, 554
F.3d 967, 979 (Fed. Cir. 2009). Similarly, in CyberSource, the Federal
Circuit held CyberSource 's method claim for detecting fraud in credit card
transactions conducted over the Internet between consumer and merchant is
drawn to an unpatentable "mental process" because "[ a ]11 of [its] method
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Application 14/736,282
steps can be performed in the human mind, or by a human using a pen and
paper" and do not require a computer. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). However, the Federal
Circuit also held that method claims "for calculating an absolute position of
a GPS receiver and an absolute time of reception of satellite signals" are
patent eligible under § 101 because "the methods [] could not be performed
without the use of a GPS receiver." SiRF Tech., Inc. v. Int 'l Trade Comm 'n,
601 F.3d 1319, 1331-1332 (Fed. Cir. 2010).
Contrary to the Examiner's characterization, we do not discern how
specific steps of Appellant's advancement in the computer transcription
technology recited in Appellant's claims 1, 7, and 8 can be performed solely
in a person's mind. As recognized by Appellant, the human mind "would
not use a phonetic lattice, certainty value, or index" and "would not use a
first [language] model [to produce a transcription] and then select a second
[language] model, as claimed" in order to produce more accurate transcript
and reduce word error rate. App. Br. 6. Moreover, like the claims in SiRF
Technology, the steps recited in Appellant's claims 1, 7, and 8 need to be
performed by a computer to process input data in the claimed manner.
For these reasons, we agree with Appellant that claims 1-13 are not
directed to an abstract idea of "generating a transcript of an audio input."
Because Alice step 1 is dispositive, we need not reach Alice step 2 (inventive
concept). As such, we do not sustain the Examiner's rejection of claims 1-
13 under 35 U.S.C. § 101.
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Application 14/736,282
CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 1-13 under 35 U.S.C. § 101.
DECISION
As such, we reverse the Examiner's rejection of claims 1-13 under
35 U.S.C. § 101.
REVERSED
13