SIERACKI, JEFFREY M.

Patent Trials and Appeals Board

May 15, 2020

13618803 - (D) (P.T.A.B. May. 15, 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.
13/618,803 09/14/2012 JEFFREY M. SIERACKI MR4673-4/CIP/C 6098
4586 7590 05/15/2020
ROSENBERG, KLEIN & LEE
3458 ELLICOTT CENTER DRIVE-SUITE 101
ELLICOTT CITY, MD 21043
EXAMINER
SKIBINSKY, ANNA
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
05/15/2020 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):
ptoactions@rklpatlaw.com
ptoactions@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY M. SIERACKI1
Appeal 2019-005009
Application 13/618,803
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
DAVID COTTA, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims relating
to signal detection and discrimination, which have been rejected as
indefinite, lacking adequate description, and ineligible for patenting. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Reality Analytics, Inc.
Appeal Br. 2. We use the word Appellant to refer to “applicant” as defined
in 37 C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
The invention “relates to acoustic signal processing, and more
particularly to sensing systems in which one or more transducers receive a
sound, vibration, or similar signal that must be detected and identified in an
automated fashion.” Spec. 1.
“The SSA [Simultaneous Sparse Approximator, id. at 7] produces
structure books for each signal . . . such that the atoms of any structure book
may be compared directly to those of any other.” Id. at 9. “A structure book
describes a linear decomposition of the signal and comprises a list of
coefficients and a corresponding list of atoms for the decomposition.” Id. at
8. “Atoms” are also referred to as “prototype-signals” or “prototype signal
elements.” Id.
The Specification describes an embodiment in which
[a] collection of signature samples 30 . . . is analyzed together
with a novel sample 50. The SSA engine 81 . . . produces a
collection of matched structure books 82. These structure books
are then analyzed by means of comparing the values associated
with atoms of the novel signal’s structure book to those of the
remaining structure books. If they are within a limit defined by
the variance range of the known matches, we declare a match,
otherwise no match.
Id. at 25–26. “Among other benefits, this also allows a deployed system the
ability to learn by exposure and accommodate the environment by example.”
Id. at 26.
Claims 29–48 are on appeal. Claims 29 and 42, reproduced below, are
illustrative:
29. A method of detecting and discriminating a source of a
signal obscured in an inhomogeneous environment, the method
comprising:
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collecting a plurality of transduced signals captured
through a plurality of transducers;
establishing a plurality of analysis sets, each set including
at least one of the plurality of transduced signals;
decomposing each of the plurality of analysis sets into
matched structure books, the decomposition including
executing a processor to perform simultaneous sparse
approximations of the signals of the analysis set, each said
structure book thereby including at least one representation
defining a multi-dimensional combination of coefficients and
atoms;
storing said structure books in a computer memory;
decomposing a sampled signal of unknown source
captured from the inhomogeneous environment into a sample
structure book;
discriminating the source of the sampled signal
responsive to comparison of the sample structure book to at
least one other structure book, thereby adaptively compensating
for environmental inhomogeneity; and,
actuating a biometric response system based upon the
signal source determination.

42. A source detector for sampled signals obscured in an
inhomogeneous environment, the source detector comprising:
a plurality of transducers disposed within the inhomogeneous
environment, each transducer operable to collect a plurality of signals;
a processor coupled to the plurality of transducers, the
processor executable to:
establish a plurality of analysis sets, each set including at
least one transduced signal,
decompose transduced signals, and analysis sets thereof,
into structure books, the decomposition including executing a
processor to perform simultaneous sparse approximations of the
signals, each said structure book thereby including at least one
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representation defining a multi-dimensional combination of
coefficients and atoms,
compare structure books, and
responsive to the comparison, discriminate the source of
a sampled signal of previously unknown source captured from the
inhomogeneous environment, thereby adaptively compensating for
environmental inhomogeneity; and
a computer memory coupled to said processor for storing
said structure books.

The claims stand rejected as follows:
Claims 29–35 under 35 U.S.C. § 112, second paragraph, as indefinite
(Ans. 8);
Claims 29–35 under 35 U.S.C. § 112, first paragraph, for lack of
adequate written description (Ans. 8); and
Claims 29–48 under 35 U.S.C. § 101 as ineligible for patenting
(Ans. 3).
OPINION
Indefiniteness
Claims 29–35 stand rejected as indefinite, on the basis that “[c]laim
29 has been amended to recite ‘actuating a biometric response system based
upon the signal source determination.’ There is insufficient antecedent basis
for this limitation in the claim because the claim does not recite a signal
determination.” Ans. 9.
Appellant indicates that an “amendment to resolve the indefiniteness
issues under 35 U.S.C. § 112 ¶ 2” will be filed. Appeal Br. 28.
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Because Appellant does not dispute that claim 29 as written is
indefinite, we affirm the rejection under 35 U.S.C. § 112, second paragraph,
of independent claim 29 and dependent claims 30–35.
Written Description
Claims 29–35 stand rejected for lacking adequate written description
in the Specification. The Examiner finds that:
Claim[] 29 has been amended to recite “actuating a biometric
response system based upon the signal source determination.”
A review of the specification did not reveal support for this
limitation nor did Applicant[] point to where this limitation is
disclosed. While the specification provides support for
collecting signals with sensors it does not support “actuating” a
biometric response system of any kind based on the
determination of a signal source.
Ans. 8.
Appellant argues that “[t]he Specification discloses numerous
biometric response systems which could be improved as practical
applications of the invention.” Appeal Br. 27, citing Spec. 7 ¶ 2, 32 ¶ 5.
Appellant argues that “[a]ny and all of these systems respond to the
detection of biometric signals, activity, or material, and can therefore be
termed ‘biometric response systems.’” Id. Appellant also argues that, “in the
context of the Specification in general, it would be understood by those of
skill in the art how any of these systems could be improved by” the claimed
process. Id. Finally, Appellant argues that the Examiner’s finding, with
regard to patent eligibility, that actuation of biometric systems is routine and
conventional, “is equivalent to stating that said system ‘is so well-known
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that it need not be described in detail in the patent specification’ for the
purposes of the written description requirement.” Id. at 27–28.
We agree with the Examiner that the Specification does not provide
written descriptive support for the disputed limitation. To satisfy 35 U.S.C.
§ 112, first paragraph, the “description must ‘clearly allow persons of
ordinary skill in the art to recognize that [the inventor] invented what is
claimed.’” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (alteration in original). “In other words, the test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Id. “[W]hile the description requirement
does not demand any particular form of disclosure, or that the specification
recite the claimed invention in haec verba, a description that merely renders
the invention obvious does not satisfy the requirement.” Id. at 1352
(citations omitted).
Here, Appellant argues that the second paragraph on page 7 of the
Specification “discloses: ‘actual systems will have specific features suiting
their application. . . . A computer might be configured with one or more
microphones to interpret speech. A stethoscope might be adopted to detect
body sounds.’” Appeal Br. 27.
We do not agree that this disclosure adequately describes the disputed
limitation. The cited passage refers to various types of transducers that could
be used to sense the signals to be processed according to the claimed
method, not a biometric response system that is actuated as a result of
determining a signal source, as recited in claim 29.
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Appellant also argues that the Specification “discloses: ‘Some
contemplated applications include . . . detection and classification
(diagnoses) of human health status and disease states; acoustic biometric;
voice and/or speaker recognition.’” Appeal Br. 27 (citing Spec. 32–33).
We do not agree that this description demonstrates possession of the
disputed limitation. The cited passage does not refer to “actuating” any kind
of “response system,” as recited in claim 29, and Appellant has not pointed
to evidence showing that a skilled artisan would have recognized the
description of “detection and classification (diagnoses) of human health
status and disease states,” or “acoustic biometric,” or “voice and/or speaker
recognition” to show possession of “actuating a biometric response system
based upon the signal source determination,” as recited in claim 29. For
example, the cited disclosure referring to “acoustic biometric[s]” lacks a
description of any type of response system, or any type of biometric data
other than acoustic. Likewise, the reference to “voice and/or speaker
recognition” does not describe actuating any kind of response based on a
source determination.
In summary, the Examiner has pointed out that the Specification does
not describe “actuating a biometric response system based upon [a] signal
source determination.”
In the context of the written description requirement, an
adequate prima facie case must . . . sufficiently explain to the
applicant what, in the examiner’s view, is missing from the
written description. . . . When no such description can be found
in the specification, the only thing the PTO can reasonably be
expected to do is to point out its nonexistence.
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007).
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“The burden [is] then properly shifted to [Appellant] to cite to the
examiner where adequate written description could be found, or to make an
amendment to address the deficiency.” Id. at 1371. In response, Appellant
has pointed to a description of different transducers that can be used to
collect signals for analysis, and a description of “detection and classification
(diagnoses) of human health status and disease states; acoustic biometric;
voice and/or speaker recognition.’” Appeal Br. 27. However, Appellant has
not pointed to a description of actuating a biometric response system based
on a signal source determination, nor has Appellant provided evidence to
show that a skilled artisan would have recognized possession of the disputed
limitation based on the Specification’s description. We therefore affirm the
rejection of claims 29–36 under 35 U.S.C. § 112, first paragraph, for lack of
adequate written description.
Patent Eligibility
Claims 29–48 stand rejected under 35 U.S.C. § 101 on the basis that
“the claimed invention is directed to an abstract idea without significantly
more.” Ans. 4. The Examiner finds that “[t]he ‘simultaneous sparse
approximation’ is understood to be a data signal decomposition algorithm,
which is purely a mathematical algorithm,” and thus the claims recite “the
abstract idea of performing mathematical and algorithmic transformations on
signal data and then comparing data/information to arrive at the
determination, i.e. ‘discriminating,’ of the source of the sampled signal.” Id.
at 4–5.
The Examiner finds that “[t]his judicial exception is not integrated
into a practical application because the claims do not meet any of the . . .
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criteria” set out in the USPTO’s January 2019 Revised Patent Subject Matter
Eligibility Guidance. Id. at 5.
The Examiner also finds that the claim elements other than the
abstract idea—collecting signals with transducers, actuating a biometric
response system (for claim 29), and a processor and computer memory (for
claim 42)—do not amount to significantly more than the judicial exception.
Id. at 5–6. Specifically, collecting signals with transducers is “a preliminary
step to computerized analysis” and “data collection.” Id. at 6. “[A]ctuating a
biometric response system . . . reads on mere transmission of data.” Id. And
the recited processor and memory are “generic computer structure that
serves to perform generic computer functions.” Id. at 7.
The Examiner concludes that
As a whole the method relies on the abstract ideas of
performing mathematical algorithms, organizing information
through mathematical correlations and comparing data. The
claims do not include additional elements that are sufficient to
amount of significantly more than the judicial exception
because it is routine and conventional to perform the acts of
collecting a set of signals, processing data and storing structure
book data in a computer memory.
. . . Viewed as a whole, these additional claim element(s)
do not provide meaningful limitation(s) to transform the
abstract idea into a patent eligible application of the abstract
idea such that the claim(s) amounts to significantly more than
the abstract idea itself. Therefore, the claim(s) are rejected
under 35 U.S.C. 101 as being directed to non-statutory subject
matter.
Id.
Appellant argues that “the claims are directed to systems and methods
that detect and discriminate the source of transduced signals from an
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inhomogeneous environment” and “the recited methods and systems . . .
reduce errors in discriminating the otherwise unknown and obscured sources
of sensed signals.” Appeal Br. 15–16. Appellant argues that “[c]laim 29 is
directed to a method of using an improved biometric response system” and
“[c]laim 42 is directed to an improved source detector and discriminator for
sampled signals.” Id. at 17, 18.
Appellant also argues that “[t]he claimed subject matter . . . provides
for an inventive technological solution to the uniquely technological
problem of certain signals being too obscured in an inhomogeneous
environment to be detected and discriminated from each other by known
technologies.” Id. at 20. Appellant argues that “SSA [simultaneous sparse
approximations]-based structure books provide for improved data structures
with an unconventional yet data-based feature.” Id. at 21. Appellant argues
that previous cases show that “an inventive improvement to a previously
inefficient processing of data in achieving a practical result is a
technological solution to a technological problem.” Id. at 22.
Finally, Appellant argues that the Examiner has not met the correct
standard for showing that claim elements are well-understood, routine, and
conventional (“WRC”). Id. at 22–23 (citing Berkheimer v. HP Inc., 881 F.3d
1360 (Fed. Cir. 2018)). Appellant argues that “[t]he Examiner does not
address whether this capture of physical signals, let alone their capture
within the inhomogeneous environment, is WRC at all, declining even to
consider any element which is not ‘an active step.’. . . In failing to address
whether or not the environment of the signal capture is significantly more
under Step 2B, the Examiner errs.” Id. at 24.
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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 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
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(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)
(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,
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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. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”).2 “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.
Under the Revised Guidance and the October 2019 Update, 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 (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 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).
3 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
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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.
Revised Guidance, 84 Fed. Reg. at 52–56.
Revised Guidance Step 2(A), Prong 1
Following the Revised Guidance, we first consider whether the claims
recite a judicial exception. Claim 29 recites “decomposing each of the
plurality of analysis sets into matched structure books, the decomposition
including executing a processor to perform simultaneous sparse
approximations of the signals of the analysis set, each said structure book
thereby including at least one representation defining a multi-dimensional
combination of coefficients and atoms.” Similarly, claim 42 recites a
processor executable to “decompose transduced signals, and analysis sets
thereof, into structure books, the decomposition including executing a
processor to perform simultaneous sparse approximations of the signals,

practical application. See Revised Guidance - Section III(A)(2), 84 Fed. Reg.
54–55.
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each said structure book thereby including at least one representation
defining a multi-dimensional combination of coefficients and atoms.”
The Revised Guidance identifies three groupings of subject matter
included in the abstract idea exception, including “[m]athematical
concepts—mathematical relationships, mathematical formulas or equations.”
84 Fed. Reg. at 52.
Here, both claim 29 and claim 42 recite performing simultaneous
sparse approximations of transduced signals in order to decompose the
signals into structure books. The Specification states that “‘GAD’ refers
collectively to the Greedy Adaptive Discrimination methods disclosed in
[U.S. Patent 7,079,986]. GAD comprises several aspects, including a
Simultaneous Sparse Approximation (‘SSA’) algorithm referred to herein as
the ‘GAD decomposition algorithm’ or ‘GAD SSA.’” Spec. 2. The
Specification also states that “‘Simultaneous Sparse Approximation’ is
therefore the representation of each member of a group of signals in terms of
a common, relatively small, collection of component elements.” Id. at 3.
More specifically, “[t]he output of the SSA will comprise one or more
structure books.” Id. at 8.
A structure book describes a linear decomposition of the signal
and comprises a list of coefficients and a corresponding list of
atoms for the decomposition. We may write . . . a signal f(t) as,
f(t) = a0g0(t) + a1g1(t) + ... + angn(t) + R,
where ai are the coefficients and gi(t) the atoms, or prototype-
signals of the decomposition, and R is the residual error (if any)
after n+1 terms.
Id.
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Thus, the recitation in claims 29 and 42 of decomposing transduced
signals by performing simultaneous sparse approximations describes the
mathematical concept of performing the simultaneous sparse approximation
algorithm on acoustic signals to convert them to a mathematical list of
coefficients and atoms (prototype signals). Both claim 29 and claim 42
therefore recite an abstract idea in the form of a mathematical concept.
In addition, claim 29 recites “discriminating the source of the sampled
signal responsive to comparison of the sample structure book to at least one
other structure book.” Similarly, claim 42 recites a processor executable to
“compare structure books, and responsive to the comparison, discriminate
the source of a sampled signal.”
Another grouping of subject matter identified in the Revised Guidance
as within the abstract ideas exception is “[m]ental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” 84 Fed. Reg. at 52 (footnote omitted).
Here, the recitation in claims 29 and 42 of “compar[ing]” structure
books to each other in order to “discriminat[e]” the source of a signal is an
exercise in observing the similarities between the compared structure books
and evaluating those similarities to identify the source of the signal. Thus,
comparison of structure books and discrimination based on that comparison
recite mental processes.
Claim 42 also states that, in addition to the steps discussed above, the
processor is executable to “establish a plurality of analysis sets, each set
including at least one transduced signal.” The transduced signals are the
“plurality of signals” collected by the transducers of the detector.
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Thus, the “establish[ing]” step of claim 42 simply requires dividing a
set of transduced signals into smaller sets for mathematical manipulation.
This step again can be done mentally, or with pen and paper; for example,
by starting with a list of the signals and applying a mathematical formula to
each signal sequentially.
Claim 42 recites that the “establish[ing],” “compar[ing],” and
“discriminat[ing]” are carried out by a generic processor but that fact does
not change the analysis. “If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”
Revised Guidance, 84 Fed. Reg. at 52, n.14. Here, but for the recitation of a
generic processor, the effectively mental steps of claim 42 can practically be
performed in the mind, and therefore are still in the mental processes
category.
In summary, we agree with the Examiner that claims 29 and 42 recite
an abstract idea.
Revised Guidance Step 2(A), Prong 2
Although claims 29 and 42 recite an abstract idea, they would still be
patent-eligible if “the claim as a whole integrates the recited judicial
exception into a practical application of the exception.” Revised Guidance,
84 Fed. Reg. at 53. “A claim that integrates a judicial exception into a
practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception.” Id. The
analysis of whether a claim integrates a judicial exception into a practical
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application includes “[i]dentifying whether there are any additional elements
recited in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” Id. at 54–55.
The exemplary considerations indicating that an additional element
may integrate an exception into a practical application include “[a]n
additional element [that] reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Id. at
55. However, “[a]n additional element . . . [that] merely includes instructions
to implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea” is an indication that “a judicial exception
has not been integrated into a practical application.” Id.
Here, in addition to the mathematical concept of simultaneous sparse
approximations and the mental process of comparing structure books, claim
29 recites “actuating a biometric response system based upon the signal
source determination.”4 The Specification states that simultaneous sparse
approximation (SSA) is “able to produce atoms that are ‘similar’ as judged
by the algorithm rather than identical; this novel feature is advantageous in
many implementations because it allows the algorithm to automatically

4 As discussed above, the Specification does not demonstrate that Appellant
was in possession of a method that includes actuating a biometric response
system based upon determining the source of an acoustic signal. For
eligibility purposes, however, we address the limitations of claim 29 as
written, regardless of whether the relevant limitation has adequate
descriptive support in the Specification.
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account for noise, jitter, and measurement error between the signals.”
Spec. 9.
More specifically with respect to claim 29, the Specification describes
a method in which “[a] collection of signature samples 30 of one or more
classes is analyzed together with a novel sample 50.” Spec. 25.
The SSA engine 81 . . . produces a collection of matched
structure books 82. These structure books are then analyzed by
means of comparing the values associated with atoms of the
novel signal’s structure book to those of the remaining structure
books. If they are within a limit defined by the variance range
of the known matches, we declare a match, otherwise no match.
Id. at 25–26. The Specification states that this approach “has certain
advantages over the other systems. In particular, no training is required and
no dictionary of abstracted signatures is required. Among other benefits, this
also allows a deployed system the ability to learn by exposure and
accommodate the environment by example.” Id. at 26.
Thus, the Specification describes the method of claim 29 as an
improvement in determining the source of an acoustic signal, in that the
recited method is able to automatically account for noise, jitter, and
measurement error between signals, and is able to learn by exposure and
accommodate the environment. The Specification also states that “[t]he
acoustic systems and methods may specifically be applied to a host of
applications,” including “acoustic biometric” and “voice and/or speaker
recognition.” Spec. 21–33. As applied to a biometric response system,
therefore, the method of claim 29 represents an improvement to a technical
field, and claim elements that reflect an improvement to a technical field are
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indicative that the recited judicial exception has been integrated into a
practical application.
Claim 42, however, does not recite any active step following
discriminating the source of a sampled signal. Claim 42 therefore does not
improve a technical field or include any other practical application of the
mathematical concept and mental processes that are recited in the claim.
Because claim 42 does not recite a practical application, it does not integrate
the recited judicial exceptions into a practical application.
Claim 42 recites “a plurality of transducers . . . operable to collect a
plurality of signals.” The recited transducers, however, merely collect the
data (acoustic signals) that are used in the remainder of the claim for
decomposition into structure books and comparison to discriminate the
source of a signal. “[A]n additional element [that] adds insignificant extra-
solution activity” is not an indication that a judicial exception has been
integrated into a practical application. Revised Guidance, 84 Fed. Reg. at 55.
See also id. at n.31 (Insignificant extra-solution activity includes “mere data
gathering such as a step of obtaining information about credit card
transactions so that the information can be analyzed.”).
Claim 42 also recites “a processor” and “a computer memory.” “An
additional element [that] . . . merely includes instructions to implement an
abstract idea on a computer, or merely uses a computer as a tool to perform
an abstract idea” is also an indication that a judicial exception has not been
integrated into a practical application. Revised Guidance, 84 Fed. Reg. at 55.
Here, the claim itself recites nothing more than generic computer
components, and the Specification does not provide any more details
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regarding the requirements for computer implementation. Thus, the
computer elements recited in claim 42 amount to no more than using a
computer as a tool to perform the mathematical concept and comparison.
“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at
223.
In summary, we conclude that claim 29 integrates the recited judicial
exceptions into a practical application, such that the claim as a whole is not
directed to the recited judicial exceptions. Thus, claim 29 and dependent
claims 30–35 are patent eligible.
However, claim 42 does not integrate the recited judicial exceptions
into a practical application. We therefore proceed to Step 2(B) of the
Revised Guidance analysis with respect to claim 42.
Revised Guidance Step 2(B)
The Revised Guidance directs us to consider whether claim 42
includes “additional elements . . . [that] provide[] ‘significantly more’ than
the recited judicial exception.” 84 Fed. Reg. at 56. The Revised Guidance
states that an additional element that “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, . . . is indicative that
an inventive concept may not be present.” Id.
As discussed above, and aside from the elements that are directed to
mathematical concepts and mental processes, claim 42 recites “a plurality of
transducers disposed within the inhomogeneous environment, each
transducer operable to collect a plurality of signals,” “a processor coupled to
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the plurality of transducers,” and “a computer memory coupled to said
processor.”
With regard to the transducers required by claim 42, the Specification
itself makes clear that transducers are well-understood, routine, and
conventional. The Specification states, for example, that the invention
relates to “sensing systems in which one or more transducers receive a
sound, vibration, or similar signal that must be detected and identified in an
automated fashion.” Spec. 1 (Field of the Invention). “Acoustic signals are
derived from sensing the vibrations of a medium or object with an
appropriate transducer. They may be recorded using microphones,
hydrophones, or pressure sensors.” Id. (Background of the Invention). Thus,
transducers include microphones, which are ubiquitous.
With regard to the processor and computer memory of claim 42, the
claim itself does not require any unconventional configuration for these
components, nor does the Specification describe any unconventional
computer hardware as part of the invention. Thus, claim 42 requires using
only a generic computer system to carry out the recited data processing, and
“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at
223.
In summary, the combination of elements recited in claim 42 does not
amount to significantly more than the judicial exceptions themselves, and
under 35 U.S.C. § 101 the claimed method is not eligible for patenting.
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Appellant’s Arguments
Appellant argues that “the Examiner listed the structure book recited
among the features of the claims as a judicial exception.” Reply Br.5 2
(citing Ans. 4). Appellant argues that a “structure book is plainly not a
method of organizing human activity, a mental process, a natural law, or a
product of nature. Furthermore, it is not a mathematical concept.” Id. at 2–3.
“Therefore, the recited structure book is not a judicial exception.” Id. at 3.
We do not agree with Appellant’s reading of the rejection. Page 4 of
the Answer, cited by Appellant, discusses structure books only in the context
of describing what is required by the claims. The Examiner does not state
that a structure book is a judicial exception. Rather, the Examiner expressly
states that the claims are directed to “the abstract idea of performing
mathematical and algorithmic transformations on signal data and then
comparing data/information to arrive at the determination, i.e.
‘discriminating,’ of the source of the sampled signal.” Ans. 4–5. Thus,
Appellant’s argument that structure books are not abstract (Appeal Br. 3) is
not germane to the basis of the rejection, or to the basis of our affirmance of
that rejection.
Appellant also argues that the Examiner erred in “dismiss[ing]
‘collecting signals with transducers’ as well-understood, routine, and
conventional activity.” Reply Br. at 3–4. Appellant argues that “the

5 The Examiner designated the § 101 rejection in the Answer as a new
ground of rejection. Ans. 3. Thus, the arguments that are relevant to this
rejection are presented in the Reply Brief.
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Examiner failed to present a prima facie case under the Berkheimer
standard.” Id. at 4.
We disagree that the Examiner erred in concluding that it is
conventional to collect signals with transducers, because Appellant’s
Specification itself describes transducers as including microphones, which
have been well-known since at least the days of the telephone. See, e.g.,
Dolbear v. Am. Bell Tel. Co., 126 U.S. 1, 531 (1888) (“[T]he fifth claim of
the patent of March 7, 1876, . . . is as follows: ‘The method of and apparatus
for transmitting vocal or other sounds telegraphically, as herein described,
by causing electrical undulations, similar in form to the vibrations of the air
accompanying the said vocal or other sounds.”).
Finally, Appellant argues that structure books “provide at least a
patent eligible ‘improvement to other technology or technical field’ (a signal
detection and discrimination system and method where comparisons and
data transformations are made simpler and more efficient.” Reply Br. 3.
Similarly, Appellant argues that “the claimed invention is directed to a
patent-eligible practical application, in at least the form of ‘an improvement
to other technology or technical field’ (a signal detection and discrimination
system and method that, unlike prior such systems and methods, operates
more accurately in inhomogeneous conditions.” Id. at 4. Appellant argues
that “[c]laim 42 is indeed directed to an improved source detector which is
far more than a microprocessor.” Id. at 7.
This argument, in any of its variations, is unpersuasive. As discussed
previously, claim 42 does not recite any active step of applying its result of
“discriminat[ing] the source of a sampled signal.” Claim 42 does not even
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require outputting or displaying that result. So the net result of the
mathematical and comparative steps of claim 42 is simply a determination,
within a processor, that the structure book of a sampled signal is similar to
some other structure book. Thus, any improvement that results from the
processing carried out by the claimed source detector is merely an
improvement in data analysis. And improved data analysis, without some
practical application of the analysis, is not an improvement of any technical
field.
Thus, claim 42 does not integrate the recited judicial exceptions into a
practical application, such that the claim is directed to more than the recited
judicial exceptions. See, e.g., SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1163 (Fed. Cir. 2018) (“the advance lies entirely in the realm of
abstract ideas, with no plausibly alleged innovation in the non-abstract
application realm. An advance of that nature is ineligible for patenting.”);
Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (“The advance [the claims] purport to make is a process of gathering
and analyzing information of a specified content, then displaying the results,
and not any particular assertedly inventive technology for performing those
functions. They are therefore directed to an abstract idea.”).
CONCLUSION
The Examiner’s rejections under 35 U.S.C. § 112, first and second
paragraphs, are affirmed. The Examiner’s rejection under 35 U.S.C. § 101 is
reversed as to claims 29–35 but affirmed as to claim 42. Claims 36–41 and
43–48 fall with claim 42 because they were not argued separately. 37 C.F.R.
§ 41.37(c)(1)(iv).
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
29–35 112, second
paragraph
Indefiniteness 29–35
29–35 112, first
paragraph
Written Description 29–35
29–48 101 Eligibility 36–48 29–35
Overall
Outcome
29–48
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED