Lenovo (Singapore) Pte. Ltd.

Patent Trials and Appeals Board

Feb 21, 2020

14741605 - (D) (P.T.A.B. Feb. 21, 2020)

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.
14/741,605 06/17/2015 Russell Speight VanBlon RPS920140128USNP(710.393) 8680
58127 7590 02/21/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
LELAND III, EDWIN S
ART UNIT PAPER NUMBER
2677
MAIL DATE DELIVERY MODE
02/21/2020 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 RUSSELL SPEIGHT VANBLON, NATHAN J. PETERSON,
ARNOLD S. WEKSLER, ROD D. WALTERMANN, and
JOHN CARL MESE1
Appeal 2019-001107
Application 14/741,605
Technology Center 2600
Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
JEREMY J. CURCURI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20, which are all of the pending claims. App.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies International Business Machines
Corporation as the real party in interest. Appeal Brief filed June 4, 2018
(“Appeal Br.”) 3.
2 In addition to the noted Appeal Brief, we also refer to the Specification,
filed June 17, 2015 as amended January 12, 2017 (“Spec.”); Final Office
Action, mailed January 4, 2018 (“Final Act.”); Examiner’s Answer, mailed
September 19, 2018 (“Ans.”); and Reply Brief, filed November 19, 2018
(“Reply Br.”).
Appeal 2019-001107
Application 14/741,605
2
Br., Claims Appendix. These claims stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter without reciting
significantly more and under 35 U.S.C. § 103 as being unpatentable over
prior art cited by the Examiner. Final Act. 3–18. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Appellant describes the present invention as follows:
[A] method of detecting and processing normal voice inputs and
alternative vocal inputs differently. Using such alternate
detection, an embodiment may direct the inputs differently, e.g.,
determine where the input gets routed, e.g., depending on the
volume of speech, effectively creating multiple levels of volume
processing. For example, silent or inaudible mouth movements
might be routed to application A, whispering or barely audible
inputs might be routed to application B, and in contrast normal,
audible talking might be routed to application C, loud speaking
might be routed to application D, and shouting input might be
routed to application E. These “volume segments” could be
configured by the user to include any combination of different
speaking volumes. Speaking at an audible volume may be
ignored, transcribed, recorded, or temporarily cached.
Spec. ¶ 16.
Independent claim 1 represents the appealed claims. It is reproduced
below with formatting modified for clarity and with emphasis added to the
claim language that recites additional elements beyond the abstract ideas:
1. A method comprising:
[(i)] detecting, at an electronic device, input associated
with mouth movement and an audible level;
[(ii)] associating, using a processor, the input with at least
one of a plurality of voice enabled applications,
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wherein the associating comprises determining the at
least one of the plurality of voice enabled applications
based on the audible level of the input;
[(iii)] directing, based on the association, the input to the at
least one of the plurality of voice enabled
applications; and
[(iv)] performing, on the input, a non-audible function
associated with the at least one of the plurality of
voice enabled applications, wherein the non-audible
function is based on a function of the associated at
least one of the plurality of voice enabled
applications.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kato
Jain
Morita
Heo
Klein
US 2003/0036909 A1
US 2006/0085183 A1
US 2007/0106501 A1
US 2014/0168058
US 2015/0254058
Feb. 20, 2003
Apr. 20, 2006
May 10, 2007
June 19, 2014
Sept. 10, 2015

REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter without reciting significantly more. Final
Act. 3–5.
Claims 1–3, 6, 8, 9, 11–13, 16, 18 and 19 stand rejected under
35 U.S.C. § 103 as being unpatentable over Morita and Jain. Final Act. 6–
11.
Claims 4, 5, 7, 14, 15, and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Morita, Jain, and Heo. Final Act. 11–13.
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Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Morita, Jain, and Klein. Final Act. 13–14.
Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Morita, Jain, and Kato. Final Act. 14–18.

STANDARD OF REVIEW
The Board undertakes a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

REJECTION OF CLAIMS UNDER § 101 AS BEING
DIRECTED TO PATENT-INELIGIBLE SUBJECT MATTER
PRINCIPLES OF LAW
A. Section 101
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 U.S. 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 Court’s two-part 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
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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. 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 waterproof 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
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 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. (citation omitted)
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(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 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 (quotation marks 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. (alterations in original) (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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites the following:
(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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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THE DETERMINATIONS AND CONTENTIONS
The Examiner notes “claim 1 is directed to a method for detecting
input associated with mouth movement and an audible level, associating the
input with an application based on the audible level, directing the input to
that application, then performing a non-audible function associated with at
least one of the applications.” Final Act. 3. According to the Examiner, the
concept is similar to those found to be patent-ineligible in prior court
decisions as drawn to abstract ideas5 including claims directed to data
recognition and storage. Id. at 3–4. Accordingly, the Examiner determines
Appellant’s claims are also drawn to an abstract idea. Id. at 4.
The Examiner further determines the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements beyond the abstract idea merely
implement an abstract idea on a computer. Id. According to the Examiner,
the recited processors, memory, input device, storage and a network adapter6
are well understood, routine, and conventional features known to the
industry specified at a high level of generality. Id. The Examiner concludes

5 Final Act. 4 citing Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (“data recognition and
storage”); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094
(Fed. Cir. 2016) (“collecting and analyzing information to detect misuse”);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) (“a process of organizing information through mathematical
correlations”); West View Research LLC v. Audi AG, 685 Fed. App’x 923,
926 (Fed Cir. 2017) (“Collecting information, analyzing it, and displaying
certain results of the collection and analysis”) (quoting Electric Power Grp.,
LLC v. Alstrom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
6 Independent claim 1 recites using a processor, independent claim 11 recites
an input device, processor, and a memory device, and independent claim 20
recites a processor, network adapter, and storage.
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“[a]ll of the identified additional elements taken into consideration
individually and in combination fail to amount to significantly more than the
abstract idea.” Id. at 4−5.
Addressing Step 2A of the analysis, Appellant argues “the Office fails
to specifically point out the factors that are relied upon in making the
determination that the claims are directed to . . . the abstract idea of ‘[d]ata
recognition and storage.’” App. Br. 16. Appellant argues abstract ideas held
to be patent ineligible are limited to “concepts that are fundamental or
essential to science.” Id. at 17. Appellant further argues the claimed subject
matter is directed to a technological improvement to the field of sub-vocal
and vocal command input and processing that “provide[s] a novel method
for providing subtle commands.” Id.at 18–19. Thus, according to
Appellant, the claims are not merely directed to an abstract idea but to
solving a technological challenge that “achieves benefits over conventional
techniques for providing commands.” Id. Appellant further argues the
claims are limited to a particular improvement and specific technique, not
“any or all types of volume inputs that might be applied.” Id. at 21.
Under step 2B of our eligibility analysis, Appellant contends the
following:
[T]he claims include other substantial, meaningful limitations
that require a conclusion that the claim “integrate[s] the building
blocks into something more, thereby transform[ing] them into a
patent-eligible invention.” Alice at 2354–55. By way of
example, claim 1 requires something more than a generic
computer by associating detected input with one of a plurality of
applications and thereafter performing a nonaudible function
associated with the application the input is directed toward.
Claim 1. Without Applicant’s contribution to the technology, the
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state of the art would remain that recited in Applicant’s
specification at [paragraphs 13–157].
Id. at 21–22. Appellant argues “the elements as claimed, are not known
elements and, thus, make the claims eligible under Step 2A as not being
directed to an abstract idea [but, in any case], are combined in a manner that
is unconventional and non-generic, and are, thus, directed to substantially
more than any abstract idea.” Id. Appellant further contends the recited
limitations “confine any abstract idea to a particular, practical application of
the abstract idea, and, as explained in the specification, this combination of
limitations is not well-known, understood, routine, or conventional activity.”
Id.
In reply “[t]he Examiner holds that he has provided at least [the
required] level of specificity in his explanation as to why the claims are
drawn to an abstract idea.” Ans. 18. The Examiner disagrees the claims are
directed to a technological improvement, “but rather simply to identifying
the volume level of the speech and then routing the speech in a user
specified way based on user preference.” Id. at 18–19.
At a basic level, the invention can be construed to be a simple
automation of human activity using a computer. At a meeting,
one could arrange for normal volume conversation to be
transcribed in meeting notes, but a whisper to a subordinate to be
entered into a “to do” list. Since there is nothing inherent in
either the specification or the claims about what “application” is
mapped to what volume level, the routing of input is arbitrary
and abstract.
Id. at 19.

7 The cited portion of Appellant’s Specification describes a problem of
providing a user with effective, hands-free commands to devices without
allowing the commands to be overheard by others.
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Rather than constituting a particular technological improvement, the
Examiner finds the claimed components are generic structures used for data
gathering, analysis and transmission to a selected application. Id. at 20.
“The metric utilized to classify and route the input is simply the volume of
the speech, which is not in any way novel, much like the data gathering and
analysis in Electric Power Group.” Id. The Examiner further distinguishes
the claims over those found patent-eligible in BASCOM,8 finding “[a]ll
elements [of Appellant’s claims] that are more than the abstract idea itself
. . . are all generic computer components, which do not qualify as
significantly more than the underlying abstract idea.” Id.
ANALYSIS
Step 2A, Prong 1
We agree with the Examiner that the appealed claims are directed to
identifying the volume level of the speech and then routing the speech in a
user-specified way based on user preference. Ans. 19. In particular, the
claims recite, inter alia, “detecting input associated with mouth movement
and an audible level [and] associating the input with an application based on
the audible level.” Final Act. 3. We further agree that the steps recited by
each of the claims include collecting, recognizing, and analyzing data (Final
Act. 4) that can be construed as the automation of human activity (Ans. 19).
Certain ones of the recited steps reasonably can be characterized, then, as
concepts that can be performed in the human mind (e.g., observations,
evaluations, judgments, and opinions) and that are considered to be mental
processes, as explained below.

8 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016).
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Limitation [i] of claim 1, for example, includes the following
language:
detecting . . . input associated with mouth movement and an
audible level;
Appellant’s Specification describes receiving both sounded voiced
inputs (i.e., vocalized utterances or sounds) and sub-vocal inputs (i.e,
unvoiced or mouthed words using silent mouth movements).9 Spec. ¶¶ 31–
32. Thus, limitation (i) reasonably can be characterized as a mental process,
such as a mental observation, that can be performed in the human mind. The
2019 Revised Guidance recognizes mental observations as constituting
abstract ideas. 2019 Revised Guidance, 84 Fed. Reg. at 52. As such,
limitation (i) recites a mental process that the 2019 Revised Guidance
recognizes as an abstract idea.
Limitation (ii) recites, in part, the following language:
associating . . . the input with at least one of a plurality of voice
enabled applications, wherein the associating comprises
determining the at least one of the plurality of voice enabled
applications based on the audible level of the input;
Appellant does not direct attention to a specific portion of the
Specification disclosing the associating step or provide a definition of
associating or of a voice enabled application having an associated non-
audible function.10 In connection with the associating limitation,

9 For purposes of this appeal, we use the term voiced to mean audible
vocalized utterances and unvoiced to mean inaudible sub-vocalized mouth
movements with substantially no audible sound uttered by the speaker.
10 The Summary of the Claimed Subject Matter section of Appellant’s
Appeal Brief (App. Br. 5–14) does not clearly correlate specific claim
elements and limitations to corresponding portions of the Specification. The
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Appellant’s Specification provides an example of a specific application
being “associated” with a particular type of input:
An embodiment may [] associate a specific application with [a
sub-vocal] type of alternative input. For example, a sub-vocal
input such as a silent mouth movement can be routed to
application A, which handles all device functions related to silent
mouth movements, whereas a normal volume voice input may be
routed to application B, which handles all device functions
related to normal voice inputs.
Spec. ¶ 30 (emphasis added).
Thus, “associating” includes linking, correlating, or mapping an input
with an appropriate function for receiving the input. For example, vocalized
utterances can be associated with an audio input, and inaudible utterances
and subvocalizations can be associated with a visual input for viewing
mouth movements.
Restated, the recited step may be accomplished manually by, for
example, a person evaluating whether a speaker could be readily heard and
deciding on an appropriate way to interact by, for example, listening
carefully for voiced speech sounds, attempting to read the speaker’s lips
movements for inaudible speech, or both. Thus, limitation (ii) reasonably
can be characterized as reciting a human evaluation or judgment concerning
the audible level being heard and how best to understand what is being
spoken or mouthed, e.g., auditorily or visually. The 2019 Revised Guidance
recognizes mental processes, including such human evaluations and
judgments, as constituting abstract ideas. 2019 Revised Guidance, 84 Fed.

Summary, instead, refers generally to alleged support in the written
description for the entire subject matter of the independent claims.
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Reg. at 52. As such, limitation (ii) recites a mental process that the 2019
Guidance recognized as an abstract idea.
Limitation (iv) recites, in part, “performing, on the input, a non-
audible function.” Appellant does not set forth a definition for the recited
“non-audible function.” See generally Appeal Br. Appellant’s
Specification, though, uses the word “function” in connection with silent
versus voiced input processing: “For example, a sub-vocal input such as a
silent mouth movement can be routed to application A, which handles all
device functions related to silent mouth movements, whereas a normal
volume voice input may be routed to application B, which handles all device
functions related to normal voice inputs.” Spec. ¶ 30. Under a
corresponding interpretation, a non-audible function may include
interpreting (e.g., decoding) non-audible utterances, e.g., those associated
with mouth movements.
Decoding to understand the meaning of mouth movements reasonably
can be characterized as a mental observation or evaluation that can be
performed in the human mind. As such, limitation (iv) reasonably can be
characterized as reciting a mental process that the 2019 Revised Guidance as
an abstract idea.
For these reasons, we determine that at least the first, second and
fourth limitations of claim 1 reciting a judicial exception to patent-eligible
subject matter under step 2A, prong 1, of the 2019 Revised Guidance.
Step 2A, Prong 2
Under step 2A, prong 2, of the 2019 Revised Guidance, we analyze
whether any of the additional elements beyond the abstract idea integrate the
abstract ideas into a practical application. 2019 Revised Guidance, 84 Fed.
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Reg. at 54. The 2019 Revised Guidance provides exemplary considerations
that are indicative of an additional element or combination of elements
integrating the judicial exception into a practical application, such as an
additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at
55; MPEP § 2106.05(a).
In addition to determining the actions required by limitations (i), (ii),
and (iv) recite mental processes identified by the 2019 Revised Guidance as
abstract ideas, various limitations of claim 1 also constitute insignificant
extra-solution activity to the judicial exception. In particular, limitation (i)
more fully recites “detecting, at an electronic device, input associated with
mouth movement and an audible level.” This limitation reasonably can be
characterized as merely constituting the insignificant pre-solution activity of
data gathering.
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Limitation (iii) recites “directing, based on the association, the input
to the at least one of the plurality of voice enabled applications.”
Limitation (iii) does not add any meaningful limitations to the noted abstract
ideas because it reasonably may be characterized as merely being directed to
the insignificant post-solution activity of transmitting input data. E.g.,
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016)
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(holding that printing or downloading generated menus constituted
insignificant extra-solution activity).
Limitation (iv) reads in full, as follows:
performing, on the input, a non-audible function associated with
the at least one of the plurality of voice enabled applications,
wherein the non-audible function is based on a function of the
associated at least one of the plurality of voice enabled
applications.
Similar to limitation (iii), limitation (iv) reasonably can be
characterized as merely being directed to the insignificant post-solution
activity of executing the desired function on the specified generic
application.
Thus, limitations (i), (iii), and (iv) recite the type of extra-solution
activity (i.e., in addition to the judicial exception) the courts have
determined insufficient to transform judicially excepted subject matter into a
patent-eligible application. See MPEP § 2106.05(g); 2019 Revised
Guidance, 84 Fed. Reg. at 55 n.31; Bancorp Servs, L.L.C. v. Sun Life Assur.
Co. of Can., 771 F. Supp. 2d 1054, 1066 (E.D. Mo. 2011) aff'd, 687 F.3d at
1266 (Fed. Cir. 2012) (explaining that “storing, retrieving, and providing
data . . . are inconsequential data gathering and insignificant post solution
activity”); Bilski v. Kappos, 561 U.S. 593, 612 (2010) (holding the use of
well-known techniques to establish inputs to the abstract idea as extra-
solution activity that fails to make the underlying concept patent eligible);
Elec. Power Grp., 830 F.3d at 1355 (explaining that “selecting information,
by content or source, for collection, analysis, and display does nothing
significant to differentiate a process from ordinary mental processes”).
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In addition to the claim elements identified above as constituting
mental processes, claim 1 requires an electronic device, a processor, and
voice enabled applications having an associated non-audible function.
Examples given of the electronic device are tablets, smart watches and other
wearable devices, smartphones, laptop computers, personal computers
generally, and other electronic devices providing voice or other inputs.
Spec. ¶¶ 1, 27. The electronic device is further disclosed as “comprising: an
input device; a processor operatively coupled to the input device; a memory
device that stores instructions executable by the processor to [perform the
method steps].” Id. at ¶ 3.
As discussed above, other than providing several examples, Appellant
only describes the recited voice enabled applications at a high level of
generality. However, in the absence of evidence to the contrary, the
additional elements constitute generic software for receiving audio and
performing a non-audible function. The additional elements are no more
than standard software resident on a typical computer.
Consistent with the 2019 Revised Guidance, these additional elements
are not practical applications of a judicial exception as included among an
additional element that merely recites “apply it” or similar language, or that
merely includes instructions to implement an abstract idea on a computer, or
that merely uses a computer as a tool to perform an abstract idea.
2019 Revised Guidance, 84 Fed. Reg. at 54. See also Alice, 573 U.S. at 221
(“[M]erely requir[ing] generic computer implementation[] fail[s] to
transform that abstract idea into a patent-eligible invention.”); MPEP
§ 2106.05(f)(2) (“Use of a computer or other machinery in its ordinary
capacity for economic or other tasks (e.g., to receive, store, or transmit data)
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or simply adding a general purpose computer or computer components after
the fact to an abstract idea (e.g., a fundamental economic practice or
mathematical equation) does not provide significantly more.”).
Appellant argues “the claims are directed to technological
improvements to the field of sub-vocal and vocal command input and
processing.” App. Br. 19. Citing to paragraphs 13–16 of the Specification
describing the use of sub-vocal commands to control a device to avoid being
overheard, Appellant contends the following:
[T]he claims are directed to an improvement in existing
computer technology, as the specification identifies benefits of
the currently claimed limitations over conventional techniques
for providing hands-free command inputs to a device. More
particularly, as discussed in the specification and reiterated
above, conventional techniques do not allow users to provide
voice inputs in a discrete and subtle manner. Accordingly,
Applicant respectfully submits that the present application and
claims provide a technological improvement over existing
traditional techniques by providing a system that may direct
input to one of a plurality of applications and thereafter perform
a non-audible function associated with the at least one of the
plurality of voice enabled applications.
App. Br. 20.
Appellant’s argument is unpersuasive. The argued improvement
involves providing speech or voice inputs without being overheard. Id.
However, as found by the Examiner, “[the] claims [do] not require sub-vocal
or inaudible input and can be applied to any volume of speech.” Ans. 19.
Thus, Appellant’s argument is not commensurate in scope with the claims.
More importantly, though, even if the claims were interpreted as
reciting the processing of inaudible speech inputs, the improvement is not to
the operation of a particular computer or speech-recognition application.
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Appellant states that the invention is directed towards “provid[ing device]
users with an effective, hands-free[] method of providing commands or other
voice inputs to the device that cannot be heard or understood by others.” Id.
¶ 15. But Appellant acknowledges that speech-recognition systems and sub-
vocal input devices, such as microphones, cameras, electromyography
(EMG) devices, and optical sensors, themselves, were known. Spec. ¶¶ 1,
13, 28.
Appellant’s invention, then, more specifically relates to
“associate[ing] a specific application with [a particular type of speech or
sub-vocal] input.” Id. ¶ 30. But, as discussed above, the act of deciding
what type of application to use based upon whether an input is audible or
sub-vocal constitutes an abstract evaluation, judgment, or opinion that can
be performed in the human mind. “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.” BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018)). “[A] claim for a new abstract idea is still
an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) (emphasis omitted). “What is needed is an inventive
concept in the non-abstract application realm.” SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Contrary to Appellant’s contention, we find insufficient evidence or
reasoning to persuade us the claims are directed to improvements in a
technological field. See App. Br. 21. Appellant fails to identify and we are
unable to ascertain any solution to a technical problem or improvement to
the functioning of a computer, a technology, or a technological field. See
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MPEP § 2106.05(a) (discussing such technological improvements as
potentially amounting to significantly more than an abstract idea). Rather,
Appellant’s invention entails deciding what action or application to initiate
dependent upon how loud a person is speaking.
We are also unpersuaded by Appellant’s argument that the claims are
directed to substantially more than an abstract idea because the recited
elements are combined in an unconventional and non-generic manner. App.
Br. 22. A novel and nonobvious abstract idea is still patent ineligible. See
SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1018 (Fed. Cir. 2018) (“Nor
is it enough for subject-matter eligibility that claimed techniques be novel
and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102
and 103.”); Synopsys, 839 F.3d at 1151 (“[A] claim for a new abstract idea is
still an abstract idea.”)
For the reasons discussed above, Appellant has not persuaded us that
the additionally claimed elements, viewed both individually and as an
ordered combination, improve the functioning of a computer, recite a
particular machine or transformation, or provide any other meaningful
limitations. MPEP § 2106.05(a)–(c), (e). That is, Appellant does not
demonstrate that the invention integrates that recited abstract ideas of
claim 1 into a practical application within the meaning of the 2019 Revised
Guidance.
Step 2B
As noted above, the only claim elements beyond the recited abstract
idea are an electronic device, a processor, and voice enabled applications
having an associated non-audible function. Claim 1, limitations (i)–(iv).
Although the Examiner’s identification of additional elements differs
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somewhat from ours,11 we nonetheless agree the additional elements under
either analysis simply append well-understood, routine and conventional
activities known to the industry specified at a high level of generality to the
judicial exception. Final Act. 4. Appellant’s Specification does not
reasonably indicate that, at the time of the invention, there was anything
technologically challenging about (1) detecting an input (e.g., speech, video,
or electromyography (EMG) sensor output), (2) associating the input with a
voice enabled application, (3) directing the input to a voice enabled
application, or (4) a voice enabled application performing a non-audible
function. See generally Spec. To the contrary, as discussed above,
Appellant discloses all of the required functionality may be provided by
conventional devices such as laptop computers and smartphones.
For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
2019 Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).
Conclusion
Appellant has not adequately demonstrated that the Examiner erred in
determining that claim 1 recites one or more abstract ideas, that the claim
fails to integrate the abstract idea into a practical application, or that the
additional claim elements add significantly more to the abstract idea.

11 We note our reviewing court recognizes that “[a]n abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in
this case does not, “impact the patentability analysis.” Id. at 1241. Further,
“[a]n abstract idea can generally be described at different levels of
abstraction. . . . The Board’s slight revision of its abstract idea analysis does
not impact the patentability analysis.” Id.
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Accordingly, Appellant does not persuade us of that the Examiner erred in
concluding that claim 1 is directed to patent-ineligible subject matter.
Accordingly, we sustain the § 101 rejection of independent claim 1.
We also affirm this rejection of claims 2–20, which Appellant does not argue
separately. App. Br. 16–23.

REJECTION OF CLAIMS AS BEING OBVIOUS
OVER THE PRIOR ART
The Examiner rejects independent claim 1 under 35 U.S.C. § 103 as
being unpatentable over Morita and Jain. Final Act. 6–9. The Examiner
finds Morita’s processing of subvocal inputs teaches the limitations of
claim 1 except for (1) detecting an audio level, (2) associating by
determining the at least one of the plurality of voice enabled applications
based on the audible level of the input, (3) directing, based on the
association (i.e., the determination), the input to the at least one of the
plurality of voice enabled applications, and (4) performing a non-audible
function, on the input, associated with the at least one of the plurality of
voice enabled applications. Final Act. 8 (missing limitations italicized, these
deficiencies cascading from Morita’s failure to teach detecting an audio
level as emphasized in bold typeface).
The Examiner finds Jain’s speech recognition system, which adapts to
different levels of speech, cures the noted deficiencies of Morita. Final
Act. 8–9. Relevant to this appeal, the Examiner directs attention to Jain’s
whisper interface client, which sets an alarm for a requested time via the
whisper and which displays a confirmation that the alarm has been set for
that time. Id. at 9. The Examiner determines that Jain’s whisper interface
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client teaches or suggests claim 1’s limitation of performing a non-audible
function, on the input, associated with the at least one of the plurality of
voice enabled applications. Id. According to the Examiner, it would have
been obvious “to modify the method and device of Morita . . . with the
amplitude profiles of Jain because changing the system based on speech
amplitude increases system accuracy.” Id.
Appellant presents two primary arguments: (1) the Examiner’s reason
for combining Morita and Jain is inadequate (App. Br. 23–26) and (2) the
combination fails to teach a non-audible function performed on the input
(App. Br. 26–27). In particular, in arguing the combination is improper,
Appellant contends the Examiner’s reasoning is conclusory, lacking a
discussion of why and how the references would be combined. Id. at 24.
Appellant further argues the primary focuses of Morita and Jain are so
different that one skilled in the art would not make the asserted combination
of their respective teachings. Id. at 25.
The Examiner responds, finding Jain discloses achieving higher
speech-recognition accuracy by changing acoustic speech models depending
on whether the speech is recognized as a whisper, shout, or normal speech,
(i.e., in dependence on an audible level of the input). Ans. 20–21 (citing
Jain Abstract, ¶ 11). The Examiner concludes, “[t]herefore, the improved
accuracy of loading the appropriate speech recognition application according
to speech input volume is motivation to combine the references.” Id. at 21.
The Examiner further disagrees that Morita and Jain are directed to
fundamentally separate forms of user-device communication. According to
the Examiner, “Morita allows for audible as well as sub-audible input . . .
Jain includes tailoring the system for different volumes of input including
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whispers . . . The two references are in the same field of endeavor (i.e.
speech recognition).” Id.
Appellant’s arguments do not persuade us that the combination of
Morita and Jain is improper. The Examiner’s reason for modifying Morita
by incorporating the audible level dependent processing of Jain to thereby
achieve a higher recognition accuracy is both rational and supported by the
advantages of incorporating such a feature as disclosed by Jain. See Jain
¶ 11.
We are also unpersuaded that the references are so fundamentally
different that “a person having knowledge in the one would not look to the
teachings of the other to arrive at the currently claimed embodiments.” App.
Br. 25. To be considered in an obviousness analysis, the art must be
analogous “prior art,” which means the prior art must be either (i) in the
same field of Appellant’s endeavor or (ii) reasonably pertinent to
Appellant’s problem. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Appellant provides insufficient evidence to persuade us that either
Morita or Jain is non-analogous to the field of the rejected claims.
Therefore, in light of the absence of persuasive evidence to rebut the
Examiner’s findings and conclusion, we determine that the Examiner has
articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness.
Appellant further contends that the combination fails to teach a non-
audible function performed on the input. App. Br. 26–27. This argument is
also unpersuasive. In particular, Appellant argues Morita’s selection of a
non-audible function is responsive to the content of the input, but that the
non-audible function is not performed on the input itself, as required by the
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claims. Id. at 26. Appellant further argues “although the cited portions of
Jain disclose that a specific interface may be loaded responsive to
identifying an audible level of input, the cited portions do not disclose that a
specific input application is associated and initiated with the identified level
of input.” Id. at 27.
The Examiner responds, finding no definition in Appellant’s
Specification for either “having a non-audible function performed on the
input,” as recited by the claims, or “having a non-audible function
directed by the input,” as the Examiner alleges to be taught by the prior art.
Ans. 21. In the absence of a formal definition for the recited phrase, the
Examiner finds the example given at paragraphs 16 and 17 of the
Specification of “Write down [note]” is an example of a function that is
performed on the input. Id. at 22.
The input consists of a command “Write down” and an argument
“[note]”, so as long as the input has an argument to be acted upon,
it would seem to meet the intent of the limitation, even if it were
not interpreted under the broadest reasonable interpretation of the
claims. In this case, Jain having a whisper command of “Wake
me up at 7:30 in the morning”, does just that, having a command
“Wake me up” and an argument “at 7:30 in the morning” that is
acted upon. Therefore, limitations of the amended claims are
met.
Id.; Final Act 20–21.
Appellant’s contention is unpersuasive of reversible Examiner error.
We instead agree with the Examiner that, under a broad but reasonable
interpretation, and in the absence of sufficient evidence or argument to the
contrary, Jain’s whisper command to set an alarm teaches or suggests the
argued limitation of performing, on the input, a non-audible function
associated with the at least one of the plurality of voice enabled applications.
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For the reasons discussed, Appellant’s contentions of error in connection
with the rejection of independent claims 1, 11, and 20 are unpersuasive of
reversible Examiner error. Accordingly, we sustain the rejections of
independent claims 1, 11, and 20 under 35 U.S.C. § 103 together with the
rejections dependent claims 2–10 and 12–19 that are not argued separately
with particularity.

DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–3, 6, 8, 9,
11–13, 16, 18,
19
103 Morita, Jain 1–3, 6, 8, 9,
11–13, 16, 18,
19

4, 5, 7, 14, 15,
17
103 Morita, Jain, Heo 4, 5, 7, 14, 15,
17

10 103 Morita, Jain, Klein 10
20 103 Morita, Jain, Kato 20
Overall
Outcome
1−20