Scott A. KrigDownload PDFPatent Trials and Appeals BoardApr 9, 202013993841 - (D) (P.T.A.B. Apr. 9, 2020) Copy Citation 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. 13/993,841 06/13/2013 Scott A. Krig ITL.2534US (P39406US) 1023 47795 7590 04/09/2020 TROP, PRUNER & HU, P.C. PO Box 41790 HOUSTON, TX 77241 EXAMINER ITSKOVICH, MIKHAIL ART UNIT PAPER NUMBER 2483 NOTIFICATION DATE DELIVERY MODE 04/09/2020 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): Inteldocs_docketing@cpaglobal.com tphpto@tphm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT A. KRIG Appeal 2018-007040 Application 13/993,841 Technology Center 2400 Before JOHN A. JEFFERY, LARRY J. HUME, and TERRENCE W. McMILLIN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant,1 Scott A. Krig, appeals from the Examiner’s decision rejecting claims 20–28, which are all claims pending in the application. Appellant has canceled claims 1–20. See generally Appeal Br. 12–13 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Intel Corporation. Appeal Br. 3. Appeal 2018-007040 Application 13/993,841 2 STATEMENT OF THE CASE2 Appellant’s disclosed embodiments and claimed invention “relate[] to encoding video analytics results.” Spec. ¶ 1. Exemplary Claims Claims 20 and 25, reproduced below, are representative of the subject matter on appeal (emphases, labeling, and formatting added to contested limitations): 20. An encoder comprising: [L1] a processor to [L2] perform video analytics for encoded media, [L3] determine at least one of a count of a number of frames in which an object is depicted or a list of sequence numbers of frames depicted in the object, [L4] store the video analytics data and at least one of [L4(a)] a count of number of frames in which an object is depicted or [L4(b)] a list of sequence numbers of frames depicting the object in a computer accessible medium; and [L5] a memory coupled to said processor. 25. The encoder of claim 24, said processor to provide a confidence indicator indicating how certain is an identification of an object in the media. 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Jan. 9, 2018); Reply Brief (“Reply Br.,” filed July 2, 2018); Examiner’s Answer (“Ans.,” mailed May 4, 2018); Final Office Action (“Final Act.,” mailed Oct. 16, 2017); and the original Specification (“Spec.,” filed June 13, 2013) (claiming benefit of PCT/US2011/060517, filed Nov. 14, 2011). A prior appeal (Appeal No. 2017-000045) affirming the Examiner’s rejection of claims 1–28 was mailed April 3, 2017. Appeal 2018-007040 Application 13/993,841 3 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Shu et al. (“Shu”) US 2009/0322881 A1 Dec. 31, 2009 Rejections on Appeal3 R1. Claims 20–28 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or abstract idea) without significantly more. Final Act. 5–6. R2. Claims 20–28 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Shu. Final Act. 10–11. CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 7–11) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible subject matter Rejection R1 of claims 20–28 on the basis of representative claim 20. We address the appeal of anticipation Rejection R1 of claims 20–28, infra.4 3 In the event of further prosecution, we invite the Examiner’s attention to whether the recitation in claim 20 of “a count of number of frames in which an object is depicted” (second occurrence) and “a list of sequence numbers of frames” (second occurrence) represent new instances of these limitations, or whether they more properly are intended to refer back to each respective first occurrence of these phrases, and whether such potentially confusing recitations implicate the definiteness requirements of 35 U.S.C. § 112, second paragraph. 4 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together Appeal 2018-007040 Application 13/993,841 4 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We disagree with Appellant’s arguments with respect to claims 20–28 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer in response to Appellant’s arguments. We highlight and address specific findings and arguments regarding claims 20 and 25 for emphasis as follows. 1. § 101 Rejection R1 of Claims 20–28 Issue 1 Appellant argues (Appeal Br. 7–8; Reply Br. 1–3) the Examiner’s rejection of claim 20 under 35 U.S.C. § 101 as being directed to patent- ineligible subject matter is in error. These contentions present us with the following issue: shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2018-007040 Application 13/993,841 5 Under the USPTO’s Revised Guidance, informed by our governing case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under § 101? Principles of Law A. 35 U.S.C. § 101 An invention is patent-eligible if it is a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101.5 However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 5 This threshold analysis of whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter, is referred to as “Step 1” in the USPTO’s patent- eligibility analysis under § 101. MPEP § 2106. Appeal 2018-007040 Application 13/993,841 6 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” (Diehr, 450 U.S. at 191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held “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 Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). Appeal 2018-007040 Application 13/993,841 7 Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.”). 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 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (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 Revised Guidance The PTO published revised guidance in the Federal Register concerning the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf). Under the Revised Guidance, we first look to whether the claim recites: Appeal 2018-007040 Application 13/993,841 8 (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);6 and (2) additional elements that integrate the judicial exception into a practical application (see Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).7 See Revised Guidance 52–53. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(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.8 See Revised Guidance 56. Step 2A(i) – Abstract Idea Informed by our judicial precedent, the Revised Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation: 6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance (hereinafter “Step 2A(i)”). 7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance (hereinafter “Step 2A(ii)”). 8 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the Supreme Court’s two-step framework, described in Mayo and Alice. Appeal 2018-007040 Application 13/993,841 9 (a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; (b) Certain methods of organizing human activity — fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Revised Guidance 52 (footnotes omitted). Under the Revised Guidance, if the claim does not recite a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above), then the claim is patent- eligible at Step 2A(i). This determination concludes the eligibility analysis, except in situations identified in the Revised Guidance.9 However, if the claim recites a judicial exception (i.e., an abstract idea enumerated above, a law of nature, or a natural phenomenon), the claim requires further analysis for a practical application of the judicial exception in Step 2A(ii). 9 In the rare circumstance in which an examiner believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea, the procedure described in Section III.C. of the Guidance for analyzing the claim should be followed. See Revised Guidance, Section III.C. Appeal 2018-007040 Application 13/993,841 10 Step 2A(ii) – Practical Application If a claim recites a judicial exception in Step 2A(i), we determine whether the recited judicial exception is integrated into a practical application of that exception in Step 2A(ii) by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The seven identified “practical application” sections of the MPEP,10 cited in the Revised Guidance under Step 2A(ii), are: (1) MPEP § 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field (2) MPEP § 2106.05(b) Particular Machine (3) MPEP § 2106.05(c) Particular Transformation (4) MPEP § 2106.05(e) Other Meaningful Limitations (5) MPEP § 2106.05(f) Mere Instructions To Apply An Exception (6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity (7) MPEP § 2106.05(h) Field of Use and Technological Environment See Revised Guidance 55. 10 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative of integration into a practical application, while §§ 2106.05(f), (g), and (h) relate to limitations that are not indicative of integration into a practical application. Appeal 2018-007040 Application 13/993,841 11 If the recited judicial exception is integrated into a practical application as determined under one or more of the MPEP sections cited above, then the claim is not directed to the judicial exception, and the patent- eligibility inquiry ends. See Revised Guidance 54. If not, then analysis proceeds to Step 2B. Step 2B – “Inventive Concept” or “Significantly More” Under our reviewing courts’ precedent, it is possible that a claim that does not “integrate” a recited judicial exception under Step 2A(ii) is nonetheless patent eligible. For example, the claim may recite additional elements that render the claim patent eligible even though one or more claim elements may recite a judicial exception.11 The Federal Circuit has held claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B) because the additional elements recited in the claims provided “significantly more” than the recited judicial exception (e.g., because the additional elements were unconventional in combination).12 Therefore, if a claim has been determined to be directed to a judicial exception under Revised Step 2A, we must also evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).13 11 See, e.g., Diehr, 450 U.S. at 187. 12 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, 1304 (Fed. Cir. 2016); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014). 13 The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 Appeal 2018-007040 Application 13/993,841 12 Under the Revised Guidance, we must consider in Step 2B whether an additional element or combination of elements: (1) “Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present;” or (2) “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.” See Revised Guidance, Section III.B.14 In the Step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the Examiner finds an evidentiary basis, and expressly supports a rejection in writing with, one or more of the following: 1. A citation to an express statement in the specification or to a statement made by an applicant during (Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). 14 In accordance with existing Step 2B guidance, an Examiner’s finding that an additional element (or combination of elements) is well-understood, routine, conventional activity must be supported with at least one of the four specific types of evidence required by the USPTO Berkheimer Memorandum, as shown above. For more information concerning evaluation of well-understood, routine, conventional activity, see MPEP § 2106.05(d), as modified by the USPTO Berkheimer Memorandum (USPTO Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer Memo”). Appeal 2018-007040 Application 13/993,841 13 prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). . . . 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well- understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s). . . . 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s). . . . See Berkheimer Memo 3–4. If the Examiner or the Board determines under Step 2B that the element (or combination of elements) amounts to significantly more than the exception itself, the claim is eligible, thereby concluding the eligibility analysis. However, if a determination is made that the element and combination of elements do not amount to significantly more than the exception itself, the claim is ineligible under Step 2B, and the claim should be rejected for lack of subject matter eligibility. Analysis Step 1 – Statutory Category Claim 20, as an encoder (device) claim, recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us is whether it is directed to a judicial exception without significantly more. Appeal 2018-007040 Application 13/993,841 14 Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determined “the claims appear to be directed toward an abstract idea, determining and storing a number, which is not considered statutory under a growing multitude of cases.” Final Act. 5 (case citations omitted). We conclude claim 20 does not recite the judicial exceptions of either natural phenomena or laws of nature. We evaluate, de novo, whether claim 20 recites an abstract idea based upon the Revised Guidance. First, we look to the Specification to provide context as to what the claimed invention is directed to. In this case, the Specification discloses that the invention “relates to encoding video analytics results,” (Spec. ¶ 1), and “[e]xamples of video analytics include surveillance video analysis where persons or objects in the video are recognized, face and object recognition systems, and tracking systems that track objects, such as cars on highways, by analyzing the video using electronic techniques.” Id. ¶ 2. Appellant’s Abstract describes the invention: “An encoded media file or stream may include video analytics data. There data may include information about the objects depicted in the media.” Spec. 1 (Abstract). Appellant argues the claims are patent-eligible in light of the Federal Circuit’s holding in Enfish. Reply Br. 2–3. Enfish15 Appellant argues “[i]n the case of Enfish, memory function was improved as set forth in the specification and this was accepted by the 15 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Appeal 2018-007040 Application 13/993,841 15 Federal Circuit as a basis for finding or technology improvement sufficient to preclude abstractness and patent ineligibility.” Reply Br. 2. Further, “[t]he assertion that somehow the claimed improvement is not ‘fundamental’ enough is mere conclusion. There is nothing in any case law that requires that the improvement be both an improvement as well as ‘fundamental.’ Nothing in the Enfish case supports this. The only standard is that if there is an asserted improvement in the specification (and here the Examiner does not contest that there is) the claimed invention is not abstract.” Reply Br. 2–3. We disagree with Appellant’s contentions. We disagree because, in Enfish, our reviewing court held claims directed to a self-referential logical model for a computer database patent-eligible under step one of Alice. Enfish, 822 F.3d at 1330. The disclosed technique enabled faster searching and more effective storage of data than previous methods. Id. at 1333. The court found the claims directed to “a specific improvement to the way computers operate, embodied in the self-referential table” (id. at 1336), and explained that the claims are “not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database” that functions differently than conventional databases. Id. at 1337. We do not find the claims on appeal, which recite performing video analytics by counting either a number of frames in which an object is depicted or a list of sequence numbers of frames depicted in the object, and storing the count, to be sufficiently analogous to those in Enfish, in which the Federal Circuit held the claims to be an improvement in the operation of the computer. Appeal 2018-007040 Application 13/993,841 16 In TABLE 1 below, we identify in italics the specific claim limitations in claim 20 that we conclude recite an abstract idea. We additionally identify in bold the additional (non-abstract) claim limitations that we conclude are generic computer components and techniques: TABLE 1 Independent Claim 20 Revised Guidance An encoder comprising: An encoder (device) is a statutory subject matter class. See 35 U.S.C. § 101. [L1] a processor to A processor is a generic computer component. [L2] perform video analytics for encoded media, “[P]erform[ing] . . . analytics,” i.e., performing analysis, is an abstract idea, i.e., an observation, evaluation, judgment, opinion” which could be performed as a mental process. See Revised Guidance 52. [L3] determine at least one of a count of a number of frames in which an object is depicted or a list of sequence numbers of frames depicted in the object, “[D]etermin[ing] . . . a count” or “a list of sequence numbers” is an abstract idea, i.e., an observation, evaluation, judgment, opinion” which could be performed as a mental process. See Revised Guidance 52. Alternatively, determining a count can be considered a mathematical calculation, which is an abstract idea. Revised Guidance 52 and n.12 citing SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a “series of mathematical calculations based on selected information” are directed to abstract ideas). [L4] store the video analytics data and at least one of [L4(a)] a count of number of frames in Storing data is a generic computer function, whether it is storing a count of frames, or a list of sequence numbers. Appeal 2018-007040 Application 13/993,841 17 Independent Claim 20 Revised Guidance which an object is depicted or [L4(b)] a list of sequence numbers of frames depicting the object in a computer accessible medium; and [L5] a memory coupled to said processor. A memory is a generic computer component. Appeal Br. 12 (Claims App.). Under the broadest reasonable interpretation standard,16 we conclude limitations L1 through L5 of claim 20, as a whole, recite functions that would ordinarily be carried out when determining the occurrence of an object in video media by determining and storing a representative number. See Final Act. 5–6. For example, “determin[ing] at least one of a count of a number of frames in which an object is depicted or a list of sequence numbers of frames depicted in the object” are operations that generally occur when conducting video analysis, i.e., analytics, to determine the occurrence of an object in media. Further, performing video analytics and either 16 During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2018-007040 Application 13/993,841 18 determining a count of a number of frames in which the object is depicted or a list of sequence numbers of the frames depicted in the object is an abstract idea, whether initiated on paper, or by using a computer. We determine that claim 20, overall, recites a mental process that may also be performed in the mind or by pen and paper. This type of activity, i.e., determining the occurrence of an object in video media by determining and storing a representative number, as recited in limitations L1 through L5, for example, and aside from any computer-related aspects, includes longstanding conduct that existed well before the advent of computers and the Internet, and could be carried out by a human in the mind or with pen and paper.17 See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”).18 17 In particular, we determine limitations L2 (“perform video analytics for encoded media”) and L3 (“determine at least one of a count of a number of frames in which an object is depicted or a list of sequence numbers of frames depicted in the object”) represent abstract ideas in the form of mental processes. 18 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, “[t]he Board’s slight revision of its abstract idea analysis does not impact the patentability analysis.” Id. Moreover, merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Appeal 2018-007040 Application 13/993,841 19 Thus, under Step 2A(i), we agree with the Examiner that claim 20’s encoder is a combination of well-understood, routine, and conventional computer elements and techniques (see analysis under Step 2A(ii) and Step 2B, infra) that are used to execute abstract ideas, i.e., in the form of generic limitations L2 and L3. We conclude claim 20, under our Revised Guidance, recites a judicial exception of determining the occurrence of an object in video media by determining and storing a representative number, i.e., a mental process, and thus is an abstract idea. Step 2A(ii): Judicial Exception Integrated into a Practical Application? If the claims are directed to a judicial exception, as we conclude above, we proceed to the “practical application” Step 2A(ii) in which we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. As to the specific limitations, we find limitations L2 and L3 recite abstract ideas, and limitations L1, L4, L4a, L4b, and L5 recite conventional computer components and/or techniques, e.g., a processor, and storing data in a memory and, on this record, we are of the view that Appellant’s claims do not operate the recited generic computer components in an unconventional manner to achieve an improvement in computer functionality. See MPEP § 2106.05(a). Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). Appeal 2018-007040 Application 13/993,841 20 We find each of the limitations of claim 20 recite either abstract ideas as identified in Step 2A(i), supra, or conventional use of generic computer components, and none of the limitations integrate the judicial exception of determining the occurrence of an object in video media by determining and storing a representative number into a practical application as determined under one or more of the MPEP sections cited above. The claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Appellant argues the claims represent an improvement, i.e., “[h]ere, tracking the movement of across frames is improved and the operation of the technology, and particularly the operation of a processor is improved as a result. The Manual of Patent Examining Procedure is explicit that such improvements set forth in the specification are entitled to significant, if not dispositive weight.” Reply Br. 2 (emphasis added). Appellant further argues: Moreover, the present application points out that the claimed invention does improve the operation of a processor by enabling tracking the movement of objects across frames. See Specification at ¶ 57. Where the processor is used to track or record the movement of objects between the frames, the claimed invention improves operation of the processor. In other words the claimed invention provides a way to determine the number of frames that include an object or even better which frames include the object. Appeal Br. 8. In particular, Appellant does not identify, nor can we identify, any recited limitation or limitations, individually, or as a whole, that serve to improve the operation of a processor or of the encoder. Moreover, we note Appeal 2018-007040 Application 13/993,841 21 claim 20, for example, merely counts a number of frames in which the object is depicted or a list of sequence numbers of the frames depicted in the object, and stores the count in a memory. No further reliance upon the stored count is recited which could arguably be seen as representing an improvement in the operation of a processor, or of the encoder overall.19 Under analogous circumstances, the Federal Circuit has held that “[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that [such] data . . . was previously collected, analyzed, manipulated, and displayed manually, and it simply proposes doing so with a computer. We have held such claims are directed to abstract ideas.” Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016) (“Though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.”). Therefore, the claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Thus, on this record, Appellant has not shown an improvement or practical application under the guidance of MPEP section 2106.05(a) (“Improvements to the Functioning of a Computer or To 19 As pointed out by the Examiner, “[t]he claims should be amended to include limitations toward the technical field.” Final Act. 6. Appeal 2018-007040 Application 13/993,841 22 Any Other Technology or Technical Field”) or section 2106.05(e) (“Other Meaningful Limitations”). Therefore, we conclude the abstract idea is not integrated into a practical application, and thus claim 20 is directed to the judicial exception. Step 2B – “Inventive Concept” or “Significantly More” If the claims are directed to a judicial exception, and not integrated into a practical application, as we conclude above, we proceed to the “inventive concept” step. For Step 2B we must “look with more specificity at what the claim elements add, in order to determine ‘whether they identify an “inventive concept” in the application of the ineligible subject matter’ to which the claim is directed.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). In applying step two of the Alice analysis, our reviewing court guides we must “determine whether the claims do significantly more than simply describe [the] abstract method” and thus transform the abstract idea into patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). We look to see whether there are any “additional features” in the claims that constitute an “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be more than “well-understood, routine, conventional activity.” Mayo, 566 U.S. at 79. Limitations referenced in Alice that are not enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: adding the words “apply it” (or an Appeal 2018-007040 Application 13/993,841 23 equivalent) with an abstract idea20; mere instructions to implement an abstract idea on a computer21; or requiring no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the industry.22 Evaluating representative claim 20 under Step 2 of the Alice analysis, we conclude it lacks an inventive concept that transforms the abstract idea of determining the occurrence of an object in video media by determining and storing a representative number into a patent-eligible application of that abstract idea. The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer, 881 F.3d at 1368. As evidence of the conventional nature of the recited “processor” and “memory” in encoder claim 20, the Specification discloses “system 10 may be a desk top computer, a server, a laptop computer, a mobile Internet device, or a cellular telephone, to mention a few examples” (Spec. ¶ 5), and “system memory 22 may be coupled to the system bus 14. While an 20 Alice, 573 U.S. at 221–23. 21 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical principle on a physical machine, namely a computer. 22 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust account balances, and issue automated instructions involves computer functions that are well-understood, routine, conventional activities). Appeal 2018-007040 Application 13/993,841 24 example of a host system architecture is provided, the present invention is in no way limited to any particular system architecture.” Spec. ¶ 6. Thus, because the Specification describes the additional elements in general terms, without describing the particulars, we conclude the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of Appellant’s Specification, as quoted above.23 With respect to this step of the analysis, as discussed above, Appellant argues the claimed invention is significantly more than an abstract idea because, by “using the sequence numbers, there is no need to insert anything into the video itself in order to find a particular sequence.” Appeal Br. 8. We are not persuaded by Appellant’s argument because the features upon which Appellant relies are not recited in the claim, i.e., “there is no need to insert anything into the video itself in order to find a particular sequence.” Id. With respect to the Step 2B analysis, we conclude, similar to Alice, the recitation of an encoder that includes a “processor” and “memory” (claim 20) as argued by Appellant, is simply not enough to transform the patent-ineligible abstract idea here into a patent-eligible invention under Step 2B. See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent- eligible invention.”). 23 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. Morris, 127 F.3d at 1054. Appeal 2018-007040 Application 13/993,841 25 We conclude the claims fail the Step 2B analysis because claim 20, in essence, merely recites various computer-based elements along with no more than mere instructions to implement the identified abstract idea using the computer-based elements. Therefore, in light of the foregoing, we conclude, under the Revised Guidance, that each of Appellant’s claims 20–28, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application and does not include an inventive concept. Accordingly, we sustain the Examiner’s § 101 rejection of independent claim 20, and grouped claims 21–28 which fall therewith. See Claim Grouping, supra. 2. § 102(b) Rejection R2 of Claims 20–28 Issue 2 Appellant argues (Appeal Br. 8–11; Reply Br. 3–6) the Examiner’s rejection of claim 20 under 35 U.S.C. § 102(b) as being anticipated by Shu is in error. These contentions present us with the following issue: Did the Examiner err in setting forth a prima facie case of anticipation of claim 20? Principles of Law Anticipation of a claim under 35 U.S.C. § 102 occurs when each claimed element and the claimed arrangement or combination of those elements is disclosed, inherently or expressly, by a single prior art reference. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single Appeal 2018-007040 Application 13/993,841 26 anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). The Federal Circuit has held, “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). The Federal Circuit stated that this burden is met by “adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond.” Id. at 1370. It is only “when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection” that the prima facie burden has not been met and the rejection violates the minimal requirements of 35 U.S.C. § 132. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Analysis Appellant contends: With respect to the claim construction arguments about the materials in the Evidentiary Appendix, the Examiner has posed no contrary construction of sequence numbers. Clearly, the cited material describes sequence numbers as frame numbers. There is no reason to believe that the construction of these terms would have changed between the time depicted in the articles and the current time. They plainly are the only evidence on record of what this term means to one skilled in the art and there is no reason to construe sequence numbers to cover a pointer when a pointer points to something, and a count Appeal 2018-007040 Application 13/993,841 27 is a number, and a list of sequence numbers is a list of frame numbers. Moreover, the Specification refers to “frame” sequence numbers. Moreover, there is no conceivable way that a pointer could be either a frame count or a list of sequence numbers, especially when sequence numbers are well-known in the art, which has never refuted it in any Office Action to date and is supported by the Applicant’s submission in the Evidentiary Appendix. Appeal Br. 8–9 (citing Spec. ¶ 57). We note Shu’s Abstract discloses: Systems and methods are disclosed for analyzing, managing and cataloguing video tracks generated by a video surveillance system. Systems and methods operating in accordance with the present invention receive video tracks from a video surveillance system; analyze them for particular categories of, for example, objects or events, assign unique identifying tags to the video tracks; and save them in highly-cross-referenced databases so that video tracks containing, for example, particular objects or events can be easily searched for and recalled. Shu (Abstract). The Examiner finds Shu’s disclosure of a pointer anticipates the claimed functional determination of at least one of a count of number of frames or list of sequence numbers, i.e., the “prior art teaches[] ‘[t]he track data comprises at least a pointer [sequence numbers] to a video segment [comprising a count of frames] containing the object, and can further comprise in various embodiments location data, trajectory data, motion data, visual features (for example, color texture and shape) and object class or identity’ which correspond to tracked metrics.” Final Act. 10–11 (citing Shu ¶¶ 91, 190–192; Figs. 36, 40c, 41c, 47, 48). The Examiner further finds “that Applicant fails to point out a patentable distinction between storing a Appeal 2018-007040 Application 13/993,841 28 number to be used as a count and storing a substantially similar number to be used as a pointer.” Final Act. 3. In addition, the Examiner finds “Appellant’s argued construction is impermissibly narrow; it is based on impermissible reading limitations from external documents (University of Waterloo course material), by impermissibly narrowing limitations to Applicant’s own naming convention (lexicography), and based on submitting Attorney’s personal opinion of knowledge in the art in place of objective evidence.” Ans. 7 (underlining omitted). We disagree with the Examiner’s finding that Shu discloses at least one of or both of a count of number of frames or list of sequence numbers, as recited in claim 20. We disagree because Shu discloses “[t]he track data comprises at least a pointer to a video segment containing the object, and can further comprise in various embodiments location data, trajectory data, motion data, visual features (for example, color texture and shape) and object class or identity. In addition to pointers to video segments, the track data can also comprise digital video clips, keyframes, foreground models and background models.” Shu ¶ 91 (emphasis). We disagree with the Examiner because, on this record, we see no evidence that a pointer as disclosed in Shu is equivalent to either a count of a number of frames or a list of sequence numbers, as claimed. Therefore, based upon the findings above, on this record, we are persuaded of at least one error in the Examiner’s reliance on the cited prior Appeal 2018-007040 Application 13/993,841 29 art to disclose the disputed limitation of claim 20, such that we find error in the Examiner’s resulting finding of anticipation.24 Therefore, we do not sustain the Examiner’s anticipation rejection of independent claim 20, and claims 21–28 which depend therefrom and stand therewith.25 REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 1–7) not in response to a shift in the Examiner’s position in the Answer, arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellant has not shown. 24 Because the issue of obviousness is not before us on Appeal, we do not determine whether Shu, either alone or in combination with another reference, would render claim 20 obvious under 35 U.S.C. § 103(a). Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.02. 25 We note both Appellant and the Examiner, throughout the record, appear to rely upon our prior Decision mailed April 3, 2017 to make and emphasize various points in the Final Action, Answer, and Appellant’s briefs. We point out that the differences between this Decision and our prior Decision include the fact that the § 101 Revised Guidance is now in place, and the claims on Appeal recite a different scope of claimed subject matter, such that we determine that our prior Decision is not dispositive to issue relevant to the claims currently on Appeal. Appeal 2018-007040 Application 13/993,841 30 CONCLUSIONS (1) Under our Revised Guidance, governed by relevant case law, claims 20–28 are patent-ineligible under 35 U.S.C. § 101, and we sustain the rejection. (2) The Examiner erred with respect to anticipation Rejection R2 of claims 20–28 under 35 U.S.C. § 102(b), and we do not sustain the rejection. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner’s decision. See 37 C.F.R. § 41.50(a)(1). DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis / References Affirmed Reversed 20–28 101 Subject Matter Eligibility 20–28 20–28 102(b) Anticipation Shu 20–28 Overall Outcome 20–28 FINALITY AND 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)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation