Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Oct 5, 2021

2020003925 (P.T.A.B. Oct. 5, 2021)

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.
15/611,754 06/01/2017 Oscar Roberto Morales GARRIDO 400349-US-NP 7063
69316 7590 10/05/2021
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
KAZEMINEZHAD, FARZAD
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
10/05/2021 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):
chriochs@microsoft.com
ljohnson@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte OSCAR ROBERTO MORALES GARRIDO,
PAUL THACKRAY, and KRISTEN KENNEDY 1
_____________

Appeal 2020-003925
Application 15/611,754
Technology Center 2600
______________

Before ROBERT E. NAPPI, LARRY J. HUME, and
BETH Z. SHAW, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1 through 4 and 6 through 19.
We REVERSE.
INVENTION
The disclosed and claimed invention is a system to provide computer-
generated feedback concerning whether a user’s speech input meets
subjective criteria. Abstract. Claim 1 is illustrative of the invention and is
reproduced below:
1. A computing device comprising:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, Microsoft Technology
Licensing LLC is the real party in interest. Appeal Br. 3.
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one or more processing units; and
one or more computer-readable media comprising
computer-executable instructions which, when executed
by the one or more processing units, cause the computing
device to:
receive speech sample data obtained by digitizing
audio generated by a user speaking a speech sample;
detect instances of individual ones of multiple
speaking traits in the speech sample data;
generate, for each of the multiple speaking traits,
speaking trait quantity scores by normalizing a quantity
of detected instances of each speaking trait by dividing
the quantity of detected instances of each speaking trait
with a corresponding predetermined speaking trait
quantity normalization threshold;
generate, for each of the speaking trait quantity
scores, weighted speaking trait quantity scores by
weighting each of the speaking trait quantity scores with
a corresponding predetermined speaking trait quantity
weight, each predetermined speaking trait quantity
weight being based on an empirically-derived correlation
between one of the multiple speaking traits and one or
more criteria for which the user’s speaking the speech
sample is being evaluated;
amalgamate the weighted speaking trait quantity
scores into an amalgamated speaking trait quantity score;
and
provide feedback based on the amalgamated
speaking trait quantity score, the feedback being
indicative of the user’s speaking the speech sample
exhibiting one or more criteria;
wherein the empirically-derived correlation
between the one of the multiple speaking traits and the
one or more criteria for which the user’s speaking the
speech sample is being evaluated is based on a quantity
of the one of the multiple speaking traits detected in a set
of speech samples that were previously categorized as
highly exhibiting the one or more criteria and on a
quantity of the one of the multiple speaking traits
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detected in a set of speech samples that were previously
categorized as poorly exhibiting the one or more criteria..

REJECTION AT ISSUE
The Examiner rejected claims 1 through 4 and 6 through 19 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act.
3–6.2
PRINCIPLES OF LAW
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.3 The USPTO
current eligibility guidance is found in the Ninth Edition, Revision 10.2019
(revised June 2020) of the Manual of Patent Examination Procedure
(MPEP), and particularly within Sections 2103 through 2106.07(c).
“Because the MPEP now incorporates the 2019 Revised Patent Subject
Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility
Guidance Update (October 2019 Update), and the Berkheimer Memo,4 all

2 Throughout this Opinion, we refer to the Appeal Brief, filed January 21,
2020 (“Appeal Br.”), the Reply Brief, filed April 30, 2020 (“Reply Br.”), the
Examiner’s Answer, mailed March 6, 2020 (“Ans.”), and the Final Office
Action, mailed May 20, 2019 (“Final Act.”).
3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). 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”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update
at 1.
4 Referring to Berkheimer v. HP, Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018).

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references to those materials should now be directed to the MPEP.” See
https://www.uspto.gov/patent/laws-and-regulations/examination-
policy/subject-matter-eligibility (emphasis added). All references to the
MPEP throughout this Decision are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).5

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 are
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.

See MPEP § 2106.05(d)).
ANALYSIS
Patent eligibility under § 101 is a question of law that may contain
underlying issues of fact. “We review the [Examiner’s] ultimate conclusion

5 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” MPEP § 2106.04(d)II.
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on patent eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer, 881 F.3d at 1365); see
also SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir.
2010) (“Whether a claim is drawn to patent-eligible subject matter is an
issue of law that we review de novo.”). We have reviewed Appellant’s
arguments in the Briefs, the Examiner’s rejection, and the Examiner’s
response to Appellant’s arguments. Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of all the claims under 35
U.S.C. § 101 and we address them as they apply to the 2019 Revised
Guidance.

Abstract Idea
The Examiner finds that the claims are not patent eligible as they are
directed to a judicial exception without reciting significantly more. Final
Act. 4–6. The Examiner finds that the claims are directed to a mental
process or a method of managing interactions between two people. Final
Act. 5; Ans. 4–7. The Examiner states:
All these steps can be done mentally: i.e., one person
listening to another person can determine the number of pauses
(filler sound speaking trait), and/or the number of words spoken
for the period spoken to determine the speaking speed (another
speaking trait), so long as the length of the speech is not too
long to make it humanly impossible to carry out those choirs, to
determine the respective scores of each of those traits. The steps
of weighting different scores into an “amalgamated” “score” is
also nothing a human can’t perform; e.g., for a given purpose,
one can weight speed of speech higher than the number of
pauses or vice versa, and use a criterion; e.g., for an
advertisement to be persuasive, speed could be weighted higher
than pauses. As another example consider a classic case of
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managing interactions between two people for the purpose of
teaching one to speak properly. For example what a speech
therapist might do when performing a series of activities on a
patient; i.e., have patient read a bunch of text, determine what
types of speaking traits are being performed when spoken by
patient, compiling and weighting (or rating) all of the
information once activities are completed. Then provide a
feedback.

Final Act. 5. Further, the Examiner concludes the “digitizing audio”
limitation does not preclude the claim from reciting a mental step as is can
be met by audio captured by a cell phone and that the remainder of the
claims steps do not recite manipulation of the digital data. Final Act. 6 (see
also Ans. 4).
Appellant argues the Examiner’s rejection is in error because the
Examiner has not shown that the claims recite an abstract concept. Appeal
Br. 12–15; Reply Br. 4–6. Appellant argues the independent claims recite
detecting instances of speaking traits by digitizing audio generated by a user
speaking which are steps a human mind is not equipped to perform. Appeal
Br. 13. Further, Appellant cites the informative Patent Trial and Appeal
Board decision Ex parte Linden as persuasive authority that the speech
transcription and normalization of the files are not steps that can be
performed mentally. Appeal Br. 13–14 (citing Ex parte Linden, Appeal
2018-003323, Decision on Appeal dated April 1, 2019 at page 9) Reply Br.
5–6.6 Appellant argues that the claims on appeal are:
not directed to the general concept of providing subjective
feedback to a speech. Rather they recite a specific, multi-step
process by which a computer analyzes digital data, in a manner
that can only be performed by a computer, including utilizing

6 We note that this case is now cited as Ex parte Hannun).
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training data to empirically derive correlations between
detected quantities of specific speaking traits and corresponding
subjective criteria and then utilizing such empirically derived
correlations to influence the weights accorded to specific
detected speaking traits in the user’s speech.

Appeal Br. 14–15 (emphasis omitted). Additionally, Appellant argues that
the claims do not recite one of the methods of organizing human activity,
identified in the 2019 PEG. Appeal Br. 15–16.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. We concur with the Examiner that the limitation directed to
digitizing audio, does not preclude the claim from reciting a mental process.
As identified by the Examiner, this limitation is broad enough to encompass
data captured by a cell phone (i.e., a person hearing a speech sample on the
cell phone). Final Act. 6. However, we disagree with the Examiner that the
claim when considered on the whole recites an abstract concept.
The invention is directed to an improvement, which allows computers
to provide feedback regarding subjective criteria such as whether a user’s
speech is persuasive, engaging, confident, or other like subjective criteria.
See Spec. ¶ 2. Our reviewing court said that “[w]hether at step one or step
two of the Alice test, in determining patentability of a method, a court must
look at the claims as an ordered combination, without ignoring the
requirements of the individual steps.” McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (citing Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014)). Claims 1 and 15 recite specific steps
of: detecting instance of individual ones of speaking traits in the sample
data, for each speaking trait, generating scores by normalizing quantity of
detected instances of the trait, using these scores to generate weighted
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speaking trait quantity score based upon empirically derived correlation
between one of the speaking traits and one or more criteria for which the
user’s speaking the speech sample is being evaluated. Claim 8 recites:
receive a first set of multiple speech samples, each
identified to comprise a first speaking trait;
identify a first set of audio constructs that are common
among the first set of multiple speech samples,
associate the first set of audio constructs with the first
speaking trait such that identification of one instance of the first
set of audio constructs in a new speech sample causes the set of
computing devices to identify that new speech sample as
comprising at least one instance of the first speaking trait;
repeat the receiving, the identifying, and the associating
for each of others of multiple speaking traits;
receive a second set of multiple speech samples, each
categorized as highly exhibiting a first criteria;
receive a third set of multiple speech samples, each
categorized as poorly exhibiting the first criteria;
detect instances of the first speaking trait in the second
set of multiple speech samples;
separately detect instances of the first speaking trait in
the third set of multiple speech samples;
generate a predetermined speaking trait quantity weight
for the first speaking trait based on a quantity of the detected
instances of the first speaking trait in the second set of multiple
speech samples and a quantity of the detected instances of the
first speaking trait in the third set of multiple speech samples;
repeat the receiving, the detecting and the generating for
each of the others of the multiple speaking traits;
receive speech sample data obtained by digitizing audio
generated by a user speaking a speech sample;
detect instances of individual ones of the multiple
speaking traits in the speech sample data by reference to the
identified audio constructs that were associated with the
individual ones of multiple speaking traits[.]

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We consider these limitations to be similar to those at issue in McRO
in that they recite allowing a computer “to perform a distinct process to
automate a task previously performed by humans.” See McRO, 837 F.3d at
1314. Further, as in McRO, the claimed process is carried out in a different
way than the prior non-computer method to improve the technology. See
McRO, 837 F.3d at 1314–16. Appellant’s Specification identifies that the
process of providing feedback regarding subjective criteria, such as whether
a user’s speech is persuasive, engaging, confident, or other like subjective
criteria, when performed by a human is by “gut feel.” Spec. ¶ 40. Whereas
the steps discussed above are an attempt “to utilize a computing device to
empirically perform what a human subjectively performs in a fundamentally
different manner.” Spec. ¶ 40. Thus, regardless whether considered under
step one or two of the Alice framework, we do not find that the claims are
directed to patent-ineligible subject matter, and we do not sustain the
Examiner’s rejection of claims 1 through 4 and 6 through 19 under 35
U.S.C. § 101.
DECISION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–19 101 Eligibility 1–4, 6–19

REVERSED