TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)

Patent Trials and Appeals Board

May 29, 2020

15118720 - (D) (P.T.A.B. May. 29, 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.
15/118,720 08/12/2016 Anders K. ERIKSSON 3602-1290 6637
6449 7590 05/29/2020
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14TH STREET, N.W.
SUITE 800
WASHINGTON, DC 20005
EXAMINER
PHAM, THIERRY L
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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):
PTO-PAT-Email@rfem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDERS K. ERIKSSON
Appeal 2019-002764
Application 15/118,720
Technology Center 2600
Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 2, 4–6, 8, 11, 12, 14–16, 18, and 23–
25. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We

1 We refer to the Specification, filed August 12, 2016 (“Spec.”); Final Office
Action, mailed April 11, 2018 (“Final Act.”); Appeal Brief, filed September
11, 2018 (“Appeal Br.”); Examiner’s Answer, mailed December 21, 2018
(“Ans.”); and Reply Brief, filed February 19, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
Telefonaktiebolaget LM Ericsson (publ). Appeal Br. 2.
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heard oral arguments in this appeal on May 13, 2020. A transcript of the
hearing will be added to the record in due course.
We AFFIRM.
Summary of the Disclosure
Appellant’s claimed subject matter “relates to exploiting the spatial
coherence of multiple input audio channels in order to generate high quality
multi[-]channel comfort noise.” Abstract. “Comfort noise, CN, is used by
speech processing products to replicate background noise with an artificially
generated signal.” Spec. ¶ 2.
Illustrative claim
Claim 1, reproduced below with element labels added in brackets, is
illustrative of the claimed subject matter:
1. A method for generation of comfort noise for at least two audio
channels, the method comprising:
[(i)] determining spectral characteristics of audio signals
on at least two input audio channels;
[(ii)] determining a spatial coherence between the audio
signals on the respective input audio channels; and
[(iii)] generating comfort noise for at least two output
audio channels, based on the determined spectral characteristics
and spatial coherence.
REJECTION
Claims 1, 2, 4–6, 8, 11, 12, 14–16, 18, and 23–25 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2–4.
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STANDARD OF REVIEW
The Board undertakes a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
OPINION
We are not persuaded the Examiner erred in rejecting independent
claims 1, 11, and 25 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter. Instead, we agree with and adopt the Examiner’s
findings and reasoning in the Final Office Action and the Answer as our own
and add any additional findings of fact appearing below for emphasis.
I. Principles of Law
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 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 Supreme Court’s two-step 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 id. 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)
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(“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, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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. “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.
In January 2019, the USPTO published revised guidance on the
application of § 101 (“Guidance”). See, e.g., USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
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Revised Guidance”); USPTO, October 2019 Update: Subject Matter
Eligibility (Oct. 17, 2019) (“Update”), 84 Fed. Reg. 55942 (Oct. 18, 2019)
(notice).
Under the 2019 Revised Guidance, 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 activities such as a fundamental economic practice,
or mental processes); 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)).
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.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.

II. Examiner’s Determinations
The Examiner determines the claims are directed to methods of
generating comfort noise using determined spectral characteristics and
spatial coherence that are similar to concepts determined to be abstract in
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Digitech,3 Electric Power Group,4 and Benson. 5 Final Act. 2–3. In addition
to claim elements identified as corresponding to concepts determined to be
abstract by the courts, the Examiner identifies a computing device,
computer-readable media, and processors (see, e.g., independent claims 11
and 25). According to the Examiner, “[a]ll of the identified additional
elements taken into consideration individually and in combination fail to
amount to significantly more than the abstract idea.” Id. at 3. The Examiner
explains:
By adding in elements such as the “a computing device”,
“computer-readable media” and “processors” the application
appears to be “adding the words ‘apply it’ (or an equivalent) with
the judicial exception, or mere instructions to implement an
abstract idea on a computer;” and “simply appending well-
understood, routine and conventional activities previously
known to the industry, specified at a high level of generality, to
the judicial exception.”
Id. (citing Federal Register, Vol. 79, No. 241, dated Tuesday, December 16,
2014, page 74624).
III. Appellant’s Contentions of Error
Appellant contends the claims are not directed to an abstract idea but
rather to “a very specific solution to a technical problem that is rooted in
technology.” Appeal Br. 6. Appellant argues the claimed method of
generating comfort noise “was not known in the art, and doing so is a novel

3 Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014) (organizing information through mathematical correlations).
4 Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1353–54 (Fed.
Cir. 2016) (collecting information, analyzing it, and displaying certain
results of the collection and analysis).
5 Gottschalk v. Benson, 409 U.S. 63 (1972) (mathematical procedure for
converting one form of numerical representation to another).
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and nonobvious invention.” Id. According to Appellant, “the specification
clearly explains that this represents a technical improvement to the state of
the art by improving the field of audio signal processing.” Id. at 7.
Appellant further contends as flawed the Examiner’s comparison of
the pending claims to those found to encompass abstract concepts identified
by the courts in Digitech, Electric Power Group, and Benson, alleging “none
of these abstract formulations look anything like [Appellant’s] claim.” Id.
Appellant argues “[t]o reach these comparisons, the Examiner has simplified
the claim language, and ignored the context of the claims.” Id. According
to Appellant:
Generating comfort noise, in a specific manner involving
determining spectral characteristics and spatial coherence, and
generating the comfort noise based on these determined
quantities, is far removed from the types of things that courts
have held to be abstract. Indeed, the claims recite a specific and
detailed process or arrangement to improve the performance of a
particular technological field. As described in the specification,
and also explained below, the claimed features allow for
improved comfort noise generation, resulting in less of the
unpleasant results associated with the prior art (e.g., users
experiencing something strange or annoying with the sound,
such as the experience that the noise source is located within their
head).
Id. at 8.
Appellant further contends “[e]ven if the claims are directed to an
abstract idea (which they are not), the claims would still be patent eligible
because the claims include an inventive concept – that is, the claims include
significantly more than the alleged abstract idea.” Id. at 11. Appellant
argues the claims solve unique technical problems involved in generating
comfort noise of at least two audio channels. Id. at 12. According to
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Appellant, the claims provide “specific technical improvements to the field
[of audio processing], whereby the annoying and unpleasant results of the
prior art are avoided.” Id.
Appellant still further contends the Examiner does not explain why
the dependent claims are directed to abstract ideas or fail to recite
significantly more than those abstract ideas. Id. at 12. Finally, Appellant
argues:
[A]ccording to the USPTO’s memorandum of April 19, 2018
(the “Berkheimer Memo”), the Examiner cannot reject claims
under section 101 unless the Examiner concludes that the recited
combination of elements “is widely prevalent or in common use
in the relevant industry” and the Examiner’s conclusion is based
upon “a factual determination.” (Berkheimer Memo at page 3,
lines 1-10 (emphasis added)). In this case, the Examiner has not
made such a conclusion with respect to the claims, let alone
provided any factual support for such a conclusion.
Id. at 13.
IV. Step 2A, Prong One (Judicial Exception)
Under Prong 1 of the 2019 Revised Guidance, we determine whether
the claim recites a recognized judicial exception. We agree with the
Examiner that the claim elements are similar to those determined to be
recited abstract concepts in Digitech, Electric Power Group, and Benson.
Ans. 3.
Element (i) of claim 1 recites “determining spectral characteristics of
audio signals on at least two input audio channels.” Appellant discloses “the
spectral characteristics, denoted e.g. H_l(f) and H_r(f) are determined
according to a . . . suitable method” (Spec. ¶ 35) and “[t]his could . . . be
performed using Fourier analysis of the input audio signals” (Spec. ¶ 37). A
Fourier transform is defined as “a mathematical method, developed by
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French mathematician Jean-Baptiste-Joseph Fourier (1768-1830), for signal
processing and signal generation tasks such as spectral analysis and image
processing. The Fourier transform converts a signal value that is function of
time, space, or both into a function of frequency.” MICROSOFT COMPUTER
DICTIONARY 223 (5th ed. 2002). Similarly, a Fourier series is defined as an
“[i]nfinite series of sine and cosine functions, capable if uniformly
convergent of approximating a wide variety of mathematical functions.”
The American Heritage Dictionary of the English Language 520 (Morris ed.,
1981).6 Thus, the determining required by claim element (i) is reasonably
interpreted as reciting a mathematical calculation (e.g., Fourier analysis) that
is a mathematical concept. The 2019 Revised Guidance recognizes
mathematical concepts as constituting abstract ideas. 2019 Revised
Guidance, 84 Fed. Reg. at 52.
Element (ii) of claim 1 recites “determining a spatial coherence
between the audio signals on the respective input audio channels.”
Appellant discloses a spatial coherence is determined as follows:
The spatial coherence of the background noise can be obtained
using the s coherence function C(f) = ǀS_xy(f)ǀ̂ 2/(S_x(f)*S_y(f))
where S_x(f) is the averaged spectrum of the left channel signal,
S_y(f) is the averaged spectrum of the right channel signal, and

6 See also IEEE 100: The Authoritative Dictionary of IEEE Standards Terms
453 (7th ed. 2000) (defining a Fourier series to mean “A single-valued
periodic function (that fulfills certain mathematical conditions) may be
represented by a Fourier series as follows
𝑓𝑓(𝑥𝑥) = 0.5𝐴𝐴0 + � [𝐴𝐴𝑛𝑛 cos𝑛𝑛𝑥𝑥 + 𝐵𝐵𝑛𝑛 sin𝑛𝑛𝑥𝑥]
𝑛𝑛=∞
𝑛𝑛=1

= 0.5𝐴𝐴0 + � 𝐶𝐶𝑛𝑛 sin(𝑛𝑛𝑥𝑥 + 𝜃𝜃𝑛𝑛)
𝑛𝑛=∞
𝑛𝑛=1

”
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S_xy(f) is the cross-spectrum of the left and right channel
signals. These spectra can e.g. be estimated by means of the
periodogram using the fast Fourier transform (FFT).
Spec. ¶ 18. Claim 5 similarly describes a mathematical calculation for
determining a spatial coherence as follows:
5. The method according to claim 1, wherein the spatial
coherence Cxy between two signals, x and y, of the at least two
signals, is determined as: Cxy = ǀSxyǀ2/(Sxx2 * Syy2);
where Sxy is the cross-spectral density between x and y, and Sxx
and Syy is the autospectral density of x and y respectively.
C.f. Spec. ¶ 44. Thus, determining a spatial coherence required by claim
element (ii) is reasonably interpreted as reciting a mathematical calculation
that is a mathematical concept recognized as constituting an abstract idea.
2019 Revised Guidance, 84 Fed. Reg. at 52.
Element (iii) of claim 1 recites generating comfort noise for at least
two output audio channels, based on the spectral characteristics and spatial
coherence determined according to the steps of the preceding claim elements
(i) and (ii). Appellant discloses comfort noise is generated as follows:
A spatially and spectrally correlated CN may be obtained
as
n_l(t) = ifft(H_1(f)*(W_1(f) + G(f)*W_2(f)))
n_r(t) = ifft(H_2(f)*(W_2(f) + G(f)*W_1(f)))
where H_1 (f) and H_2(f) are spectral weighting functions
obtained as a function of the signal spectra S_x(f) and S_y(f),
G(f) is a function of the coherence function C(f), and W_1 (f)
and W_2(f) are pseudo random phase/noise components.
Spec. ¶ 20. Similarly, claim 8 recites:
8. The method according to claim 1, wherein the
generation of a comfort noise signal N_l for an output audio
channel comprises:
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determining a spectral shaping function H_l, based on the
information on spectral characteristics of one of the input audio
signals and the spatial coherence between the input audio signal
and at least another input audio signal; and
applying the spectral shaping function H_l to a first
random noise signal W_l and on a second random noise signal
W_2(f), where W_2(f) is weighted based on the coherence
between the input audio signal and the at least another input
audio signal.
Appellant discloses a computer implementation using a procedure including
a set of equations implemented in pseudo-code. Spec. ¶ 28. Thus, the
generating of comfort noise required by claim element (iii) generates data
and is reasonably interpreted as reciting a mathematical calculation that is a
mathematical concept recognized as constituting an abstract idea. 2019
Revised Guidance, 84 Fed. Reg. at 52.
For the reasons discussed above, we determine that claim 1 recites
subject matter reasonably characterized as mathematical concepts (i.e.,
mathematical calculations), which are identified in the 2019 Revised
Guidance as abstract ideas. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
III. Step 2A, Prong 2 (Integration into a Practical Application)
Under Step 2A, Prong 2, of the 2019 Revised Guidance, we determine
whether any of the additional elements beyond the abstract idea integrate the
abstract ideas into a practical application. 2019 Revised Guidance, 84 Fed.
Reg. at 54. The 2019 Revised Guidance provides exemplary considerations
that are indicative of an additional element or combination of elements
integrating the judicial exception into a practical application, such as an
additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at
55; MPEP § 2106.05(a).
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12
Method claim 1 does not recite elements in addition to those discussed
above as mathematical concepts identified as abstract ideas. Although claim
1 recites input audio channels, the inputs are merely the source of the recited
audio signals, i.e., data or information, that are the subject of the
mathematical calculations performed according to the method. Similarly,
the generating step (element (iii) of claim 1) recites an intended use of the
resultant comfort noise without positively reciting using the comfort noise,
e.g., apply the comfort noise to the audio signals or channels. Instead,
claim 1 only requires “generating comfort noise for at least two output audio
channels.” As such, element (iii) of claim 1 is limited to performing
calculations without reciting a practical application.
In addition to those elements determined to constitute mathematical
concepts, apparatus claim 11 recites a processor and memory. According to
the Examiner “although structure such as processors are claimed, such
structure is claimed at a high level of generality and is performing routine
and conventional activities previously known to the industry and thus does
not qualify as ‘significantly more.’” Final Act. 3.
We agree with the Examiner. Id. Appellant discloses the use of
conventional computer components (e.g., a processor and a memory) for
implementing the recited functions. Spec. ¶¶ 60, 65, 67, 68, 72, 78, 85.
Consistent with the 2019 Revised Guidance, these additional elements are
not practical applications of a judicial exception as they are included among
additional elements that merely recite “apply it” or similar language, or that
merely includes instructions to implement an abstract idea on a computer, or
that merely use a computer as a tool to perform an abstract idea. 2019
Revised Guidance, 84 Fed. Reg. at 54. See also Alice, 573 U.S. at 221
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(“[M]erely requir[ing] generic computer implementation[] fail[s] to
transform that abstract idea into a patent-eligible invention.”); MPEP
§ 2106.05(f)(2) (“Use of a computer or other machinery in its ordinary
capacity for economic or other tasks (e.g., to receive, store, or transmit data)
or simply adding a general purpose computer or computer components after
the fact to an abstract idea (e.g., a fundamental economic practice or
mathematical equation) does not provide significantly more.”).
We disagree the claims are a specific solution to a technical problem
(Appeal Br. 6) because mere generation of data representing comfort noise
does not solve the problem of producing unpleasant effects for the listener
(Spec. ¶ 4) or improve the field of audio signal processing (Appeal. Br. 7)
unless it is applied to the audio channels or otherwise used in connection
with a perceptible output result. Instead, the claimed method for the
generation of comfort noise implements mathematical equations that are
similar to the Arrhenius equation7 recited by claims considered by the Court
in Diehr. Id. However, unlike Diehr, the results of the current claims are
not applied to the audio signals or otherwise expressly and positively
utilized. Thus, the argued improvement to audio signal processing is not
directed to a technological field (e.g., an improved audio signal) but is part
of the underlying concept of implementing particular mathematical concepts
to provide improved comfort noise, i.e., data. In particular, the argued
“improved comfort noise generation, resulting in less of the unpleasant
results associated with the prior art (e.g., users experiencing something

7 The Arrhenius equation is a formula for the temperature dependence of
reaction rates and is used to calculate the cure time in rubber-molding
presses. Diamond v. Diehr, 450 U.S. at 193.
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strange or annoying with the sound, such as the experience that the noise
source is located within their head)” is not realized according to the
independent claims.
In connection with independent claim 11, Appellant does not allege
and we do not ascertain any improvement to the additional elements of a
processor or memory, singularly or in combination. Similarly, the computer
readable medium of claim 25 is not demonstrated to be improved. Unlike
the method of operating a rubber-molding press that provided an improved
molded rubber product as claimed in Diehr, Appellant’s claims only
provide, at best, data representing an improved form of comfort noise that is
not utilized according to the claims. Therefore, contrary to Appellant’s
arguments (Appeal Br. 11–12) the claims fail to include significantly more
than the abstract idea.
Furthermore, we are not persuaded the claims are patent-eligible
based on arguments of novelty and non-obviousness. Appeal Br. 6. A novel
and non-obvious claim directed to a purely abstract idea is, nonetheless,
patent-ineligible. See Mayo, 566 U.S. at 90. See also Diehr, 450 U.S. at
188–89 (1981) ( “The ‘novelty’ of any element or steps in a process, or even
of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter.”).
We also are not persuaded that the claims are patent-eligible based on
any similarity with the subject matter determined to be patent-eligible in
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Core Wireless8 or McRO9 as argued. See Appeal Br. 8–9. The claim in
Core Wireless was directed to “an improved user interface for electronic
devices, particularly those with small screens” where the improvement was
in “the efficiency of using the electronic device by bringing together ‘a
limited list of common functions and commonly accessed stored data,’
which can be accessed directly from the main menu.” Core Wireless, 880
F.3d at 1363. The Specification in that case confirmed these improvements
were over “the prior art interfaces [that] had many deficits relating to the
efficient functioning of the computer, requiring a user ‘to scroll around and
switch views many times to find the right data/functionality.’” Id. The court
found that the disclosure in the Specification regarding the improved speed
of a user’s navigation through various views and windows “clearly indicates
that the claims are directed to an improvement in the functioning of
computers, particularly those with small screens.” Id. In contrast, Appellant
does not demonstrate the claimed method of generating comfort noise is
related to an identified improvement in the functioning of computers.
Likewise, because the comfort noise is not applied to the audio signals,
audio channels, or otherwise used, there is no improvement to the field of
audio signal processing.
Similarly, the reasons claim 1 in McRO was found patent-eligible do
not apply to Appellant’s claims. “The claimed improvement [in McRO] was
to how the physical display operated (to produce better quality images),
unlike (what is present here) a claimed improvement in [an associating]

8 Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356
(Fed. Cir. 2018).
9 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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technique with no improved display mechanism.” SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). In other words, in
McRO, data was used to improve the technology, i.e., the display
mechanism. Here, although claim 1 recites generating comfort noise, it does
not utilize the comfort noise so that there is no corresponding improvement
to the audio signals resulting from the recited steps.
We are also unpersuaded our analysis and determinations conflict
with prior decisions of this Board reversing rejections under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter including the
informational decisions identified by Appellant (Oral Hearing Transcript at
3, 11, 13–15). See Ex parte Hannun (formerly Ex parte Linden), Appeal
No. 2018-003323, 2019 WL 7407450 (PTAB Apr. 1, 2019)
(informative); Ex parte Smith, Appeal No. 2018-000064, 2019 WL 764497
(PTAB Feb. 1, 2019) (informative); Ex parte Olson, Appeal No. 2017-
006489, 2019 WL 4297780 (PTAB Mar. 25, 2019) (informative); Ex parte
Fautz, Appeal No. 2019-000106, 2019 WL 2244873 (PTAB May 15, 2019)
(informative). Although not binding authority, our informative decisions
nonetheless provide instructive guidance and Board norms on patent
eligibility issues. See PTAB Standard Operating Procedure 2, Rev. 10 § III,
at 11.10
In Hannun the claims related to systems and methods for the
transcription of speech into text. Hannun, slip op. at 2, 2019 WL 7407450,
at *1. The Board found, although the recited predicted character
probabilities were disclosed as being obtained using an algorithm, the

10 This document is available at https://www.uspto.gov/sites/default/files/
documents/SOP2%20R10%20FINAL.pdf
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mathematical algorithm or formula itself was not recited in the claims. Id.
at 10, 2019 WL 7407450, at *5. Therefore, the Board found error in the
Examiner’s basis for determining the claim recited a mathematical concept.
Id. However, the Board did not decide whether, in the absence of reciting a
formula, the claim recited a mathematical calculation as determined herein
in connection with Appellant’s instant claims. Instead, the Hannun panel
determined “even if the claims were considered to recite a mathematical
concept, under prong two of step 2A the claims are not directed to an
abstract idea because the alleged judicial exception is integrated into a
practical application.” Id. The Board agreed the claims included features
designed to achieve an improved technological result by providing an
improved speech recognition performance. Id. at 11, 2019 WL 7407450, at
*5.
In contrast to Appellant’s claims, the claim in Hannun practically
applied the mathematical concepts by “decoding a transcription of the input
audio using the predicted character probabilities outputs from the trained
neural network constrained by a language model that interprets a string of
characters from the predicted character probabilities outputs as a word or
words.” Id. at 3, 2019 WL 7407450, at *1. Accordingly, the reasoning for
reversing the Examiner’s rejection in Hannun is inapplicable to Appellant’s
claim 1. In particular, we determine claim 1 includes no additional elements
beyond the abstract idea. Furthermore, as explained above, the additional
computer-related elements recited in the other independent claims, when
considered individually and as an ordered combination, do not integrate the
abstract idea into a practical application consistent with the 2019 Revised
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Guidance. Therefore, the Hannun decision is distinguishable over the
present appeal.
In Smith, the claimed timing mechanisms and associated temporary
restraints on execution of trades were the additional elements that provided a
specific technological improvement over prior derivative trading systems.
See Smith, slip op. at 9, 2019 WL 764497, at *5. That is not the case here.
As discussed above, the only additional elements in any of the independent
claims are generic computer components and/or processing. Those
additional elements, when considered individually and as an ordered
combination, do not integrate the abstract idea into a practical application.
In Olson, the Board determined claims directed to registering a
catheter navigation system to a three-dimensional image used mathematical
equations to register the image and, therefore, recited the judicial exception
of a mathematical concept. Olson, slip op. at 10, 2019 WL 4297780, at *6.
In addressing Prong 2 of the analysis, the panel determined the claim
“recites additional limitations which focus on addressing problems arising in
the context of registering a catheter navigation system to a three-dimensional
image in connection with cardiac procedures.” Id. at 11, 2019 WL 4297780,
at *6. These additional elements included
(1) “placing a tool on a surface location Xi of the heart”; (2)
“measuring position information for [] Xi relative to a coordinate
frame X”; (3) “identifying a corresponding location Yi on the
three-dimensional image”; and (4) “associating the position
information for [] Xi as measured by the catheter navigation
system relative to [] X with position information for [] Yi on the
three-dimensional image relative to [] Y as a fiducial pair (Xi,
Yi).”
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Id., 2019 WL 4297780, at *6. In particular, the Board determined the
claimed limitations applied mathematical concepts with a particular
machine, i.e., a catheter navigation system. Id. at 12–13, 2019 WL 4297780,
at *7. Again, other than computer-related elements, Appellant’s claims do
not include additional elements much less any that integrate the abstract idea
into a practical application.
The claims in Fautz were directed to a magnetic resonance (“MR”)
tomography apparatus. Fautz, slip op. at 2, 2019 WL 2244873, at *1.
Although determining the claims recited mathematical formulas and
calculations using those formulas under Prong One, under Prong Two the
Board determined the mathematical formulas and calculations were
integrated into a practical application that provided an improved imaging
system. Id. at 6–11, 2019 WL 2244873, at *4–6. Again, unlike Appellant’s
independent claims, which do not positively recite applying the results of the
calculations to the object argued to be improved (i.e., the audio signals or
channels), Fautz’s claim 1 required reconstruction of the image data, i.e.,
improved image data resulting from the recited formulas and calculations.
Id. at 2, 2019 WL 2244873, at *1. In particular, claim 1 of Fautz recited
“said processor being configured to reconstruct image data of the
examination subject on the basis of the sum signal MR(r), and to make the
image data available at an output of the processor as an electronic data file.”
Id. at 2, 2019 WL 2244873, at *1. Appellant’s independent claims include
no corresponding limitation, e.g., resultant improved audio signals.
For the reasons outlined above, we determine that claim 1 recites
mathematical concepts, i.e., an abstract idea, and that the additional elements
recited in the claim, i.e., processor, memory, and computer readable
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medium, are no more than generic components used as tools to perform the
recited abstract idea. As such, the additional elements do not integrate the
abstract idea into a practical application. See Alice, 573 U.S. at 223–24
(“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that the independent claims are directed to an abstract idea.
Step 2B
As noted above, the only claim elements beyond the recited abstract
idea are a memory and processor (claim 11) and computer readable medium
comprising computer readable code (claim 25) performing each of the steps
otherwise recited by the elements of claim 1. The Examiner finds the
additional computer/processor elements “simply append[] well-understood,
routine and conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.” Final Act.
3 (citing Federal Register, Vol. 79, No. 241, December 16, 2014, page
74624). Appellant contends the Examiner has not concluded “that the
recited combination of elements ‘is widely prevalent or in common use in
the relevant industry’ . . . based upon ‘a factual determination’” as required
under Berkheimer.11 Appeal Br. 13 (emphasis omitted).
Appellant’s contention is unpersuasive of reversible error. As
explained above, the Examiner determines the additional elements are well-
understood, routine, and conventional. Final Act. 3; Ans. 4. The

11 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
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Examiner’s determination is consistent with the Berkheimer Memorandum,12
Appellant’s claims merely reciting generic computer components (e.g., a
processor, memory, and computer readable medium) performing generic
computing functions that are well-understood, routine, and conventional
(e.g., performing mathematical calculations). See Alice, 573 U.S. at 225 (the
“use of a computer to obtain data, adjust account balances, and issue
automated instructions; all of these computer functions are ‘well-understood,
routine, conventional activit[ies]’ previously known to the industry”)
(quoting Mayo, 566 U.S. at 71–73); see also Benson, 409 U.S. at 65 (“The
computer operates then upon both new and previously stored data. The
general-purpose computer is designed to perform operations under many
different programs.”); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (noting that using generic computing
components like a microprocessor or user interface do not transform an
otherwise abstract idea into eligible subject matter); Mortgage. Grader, Inc.
v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016)
(indicating components such as an “interface” are generic computer
components that do not satisfy the inventive concept requirement); MPEP
§ 2106.05(d)(II) (citing Alice and Mayo). Accord Berkheimer Memo. 3–4.
For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
2019 Revised Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).

12 Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (Apr. 19, 2018) available at: https://www.uspto.gov/sites/default/
files/documents/memo-berkheimer-20180419.PDF
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Accordingly, we sustain the Examiner’s rejection of independent claims 1,
11, and 25.
We are also unpersuaded the Examiner erred in rejecting the
dependent claims. See Appeal Br. 12. Although examiners are instructed to
evaluate the patent eligibility of each claim individually, consideration of
each claim individually does not require a separate written analysis of each
individual claim.
Moreover, the Examiner explicitly addressed the dependent claims,
explaining that the claims “do not provide any features/limitations that
makes significant more/improvement in the technological field. Rather, [the
dependent claims] further include[] more calculations (e.g. mathematical
procedures).” Ans. 5; Final Act. 3–4. It also is telling here that, aside from
charging that the Examiner’s analysis includes “no explanation for why [the]
dependent claims . . . are also direct to abstract ideas or do not recite
significantly more than those abstract ideas” (Appeal Br. 12), Appellant
offers no substantive arguments in support of the separate patent eligibility
of the dependent claims.
In view of the foregoing, and for the reasons set forth above with
respect to the independent claims, we sustain the Examiner’s rejection of
dependent claims 2, 4–6, 8, 12, 14–16, 18, 23, and 24.
Conclusion
Appellant has not persuaded us that the Examiner erred in determining
that independent claims 1, 11, and 25 recite one or more abstract ideas, that
the claims fail to integrate the abstract idea into a practical application, or
that the additional claim elements add significantly more to the abstract idea.
Accordingly, Appellant does not persuade us of that the Examiner erred in
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concluding that claims 1, 11, and 25 are directed to patent-ineligible subject
matter.
Accordingly, we sustain the § 101 rejection of independent claims 1,
11, and 25. We also affirm this rejection of claims 2, 4–6, 8, 12, 14–16, 18,
23, and 24, which Appellant does not argue separately with particularity.
DECISION SUMMARY
In summary:

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

AFFIRMED

Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 2, 4–6, 8,
11, 12, 14–
16, 18, 23–25
101 Eligibility
1, 2, 4–6,
8, 11, 12,
14–16, 18,
23–25