YEHEZKEL, RAANAN et al.

Patent Trials and Appeals Board

Feb 26, 2020

14578623 - (D) (P.T.A.B. Feb. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/578,623 12/22/2014 RAANAN YEHEZKEL P71375 (47122/2100) 8417
105217 7590 02/26/2020
Stoel Rives LLP
Attn: Aaron D. Barker
201 South Main
Suite 1100
Salt Lake City, UT 84111
EXAMINER
LANE, DANIEL E
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
aaron.barker@stoel.com
inteldocs_docketing@cpaglobal.com
patlaw@stoel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAANAN YEHEZKEL, DAVID STANHILL, and EYAL ROND
Appeal 2019-002267
Application 14/578,623
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–24. 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. Appellant identifies the real party in interest as Intel Corporation.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a method and instructions for recognizing
an emotion of a user who is consuming content. Spec. ¶ 1.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter.
1. At least one non-transitory computer-readable storage
medium having computer-readable instructions stored thereon,
the computer-readable instructions configured to instruct one or
more processors to:
present content received from a content provider to a user,
the content comprising a plurality of different segments of the
content and content metadata, the content metadata including
data indicating a plurality of expected emotions and a plurality
of content types corresponding to the plurality of different
segments of the content;
process sensor data received from one or more sensors
configured to monitor the user while the content is presented to
the user during each of the plurality of different segments of the
content;
cause a data storage device to store, for each one of the
plurality of different segments of the content, the corresponding
one of the plurality of expected emotions, the corresponding one
of the plurality of content types, and a corresponding portion of
the sensor data; and
determine that the user experiences one of the plurality of
expected emotions stored by the data storage device during
presentation of subsequent content to the user if both of the
following conditions are satisfied:
a subsequent content type received in subsequent
content metadata of the subsequent content is the same as
one of the stored plurality of content types that
corresponds to the same segment of the content as the one
of the plurality of expected emotions; and
a subsequent portion of sensor data observed while
presenting the subsequent content to the user is the same
as a stored portion of the sensor data that corresponds to
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the same segment of the content as the one of the plurality
of expected emotions.
Appeal Br. 42 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Leurs US 2007/0033634 A1 Feb. 8, 2007
Aravkin US 9,299,268 B2 Mar. 29, 2016

REJECTIONS2
I. Claims 1–24 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
II. Claims 1–24 are rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter.
III. Claims 1–18 and 21–24 are rejected under 35 U.S.C.
§ 102(a)(2) as anticipated by Aravkin.
IV. Claims 19 and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Aravkin and Leurs.
OPINION
Rejection I–Written Description
Claims 1–16
The Examiner finds that Appellant’s original disclosure is silent
regarding the step of “determining that the user experiences one of the
plurality of expected emotions” contingent upon satisfying both of the

2 The Examiner withdrew a rejection of claims 9–16 and 20–23 as indefinite
and a rejection of claims 5 and 11 as failing to further limit the claim from
which they depend. See Ans. 28; Final Act. 3, 8
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conditions recited in the last two paragraphs of independent claim 9
(hereinafter the “determining step”). Final Act. 5. The Examiner rejects
independent claim 1 as reciting a substantially similar limitation. See id.
Appellant argues that the determining step is supported by paragraphs
15–16, 21, 24, 29, 35, and 37 of the Specification and provides claim charts
for each of claims 1 and 9 to illustrate this point. Appeal Br. 9–12. We
reproduce a portion of Appellant’s claim chart for claim 9 below.3

Appellant’s claim chart for claim 9 contains two columns and presents
limitations recited in claim 9 in the left-hand column, and, in the right-hand

3 Appellant’s claim chart for claim 1 reproduces the same paragraphs for the
limitation at issue as those quoted in the claim chart for claim 9. See Appeal
Br. 10–12.
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column, quotations from the Specification that Appellant asserts support the
associated limitation.
In response, the Examiner finds that the claim charts for claims 1
and 9 may support isolated elements of these claims, but do not support the
limitations when taken as a whole. Ans. 29. In this regard, the Examiner
states that the claim charts “[do] not provide support for determining that the
user experiences one of the plurality of expected emotions if both of the
conditions are satisfied.” Id. The Examiner finds that the paragraphs cited
by Appellant are not sufficiently related to each other to support the
determining step. Id.
In reply, Appellant reiterates that paragraphs 24, 31, and 35 support
the claim limitations at issue in claims 1 and 9. Reply Br. 24–25. Appellant
argues that paragraph 35, as clarified by paragraph 24 of the Specification,
“discloses that the determination of the user’s estimated affective state is
based on both the behavior and the context.” Id. Addressing the Examiner’s
finding that the cited paragraphs are unrelated, Appellant states, “[a]lthough
¶¶ [0035] and [0024] are not in the same part of the specification and do not
use identical language as claim 1, these paragraphs clearly link together the
claim elements that are in question.” Id. at 25.
The Examiner has the better position because Appellant’s
Specification does not disclose the specific criteria used in the determining
step. The first criterion is that “a subsequent content type received in
subsequent content metadata of the subsequent content is the same as one of
the stored plurality of content types that corresponds to the same segment of
the content as the one of the plurality of expected emotions.” Appeal Br. 44
(Claims App.) (emphasis added). In other words, a subsequent content type
must be the same as one of the stored plurality of content types.
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The second criterion is that “a subsequent portion of sensor data
observed while presenting the subsequent content to the user is the same as a
stored portion of the sensor data that corresponds to the same segment of the
content as the one of the plurality of expected emotions.” Id. (emphasis
added). In other words, subsequent sensor data must be the same as a stored
portion of the sensor data.
As Appellant asserts, the general disclosure of mapping in the
paragraphs cited by Appellant may provide support for reciting that certain
determinations are based on previously stored parameters. However, even
assuming for the sake of argument that the Specification teaches that the
determination of the user’s state is based on both the behavior and the
context (see Reply Br. 24–25), the determining step requires something
more specific than this, namely, that two recited pairs of things be the same.
A preponderance of the evidence supports the Examiner’s finding that the
original disclosure is deficient as to this specific requirement in claims 1 and
9. Accordingly, we sustain the Examiner’s rejection of claims 1 and 9, and
associated dependent claims 2–8 and 10–16, as failing to comply with the
written description requirement.
Claims 17–24
In rejecting independent claim 17, the Examiner finds that the original
disclosure fails to provide support for the instructed operation of:
creating a personalized user emotion map by storing, for
each one of the plurality of different segments of the content, the
corresponding one of the plurality of expected emotions, the
corresponding one of the plurality of content types, and the
corresponding one of the plurality of portions of sensor data.
Final Act. 5 (quoting claim 17). Specifically, the Examiner finds that the
Specification describes using mapping rules taken from psychological
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studies or from global offline training. Id. (citing Spec. ¶ 30). The
Examiner concludes, “[t]he specification does not disclose which
psychological studies provide these rules, what these rules comprise (i.e.
formulas and algorithms), nor does it disclose the process for or scope of the
global offline training the system.” Id.
Appellant argues that the Examiner appears to be requiring disclosure
of something that is not recited in claim 17. Appeal Br. 13–14. Appellant
argues that paragraphs 24, 26, and 30 of the Specification support the
language at issue in claim 17, and Appellant provides a claim chart for
explanation. Id. at 14–15.
In response, the Examiner finds that claim 17 is related to the
disclosure in paragraph 30 of the Specification, and the “the predefined
behavior-to-emotion mapping rules [disclosed in paragraph 30] are
necessary to understand the process that the online learning module uses to
learn a unique mapping for the specific user (i.e., create a personalized user
emotion map).” Ans. 30–31.
We agree with Appellant that the rejection of claim 17 relies on an
unreasonably narrow interpretation of this claim. Specifically, we agree
that, to satisfy the written description requirement for the “creating” step, it
is not necessary to disclose the particular rules for creating the map because
no such rules are recited in claim 17. For the same reason, it is not
necessary to disclose the psychological studies used to provide such rules or
the “scope of the global offline training system.” Accordingly, we do not
sustain the rejection of claim 17, and claims 18–24 depending therefrom, as
failing to comply with the written description requirement.
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Claim 11
Claim 11 depends from claim 9 and recites “updating a personalized
emotion map configured to map various different user behaviors to various
different expected emotions via various different contexts with data from the
data storage device.” Appeal Br. 45 (Claims App.) (emphasis added). Thus,
claim 11 requires the step of updating a personalized emotion map and then
defines what the map in terms of what it contains.
In rejecting claim 11, the Examiner quotes paragraph 35 of the
Specification, which discloses updating an emotion map and also discloses
using machine learning algorithms to do determine a user’s estimated
affective state. Final Act. 6. Next, the Examiner finds, “the specification
does not disclose any further detail as to how this updating occurs nor does it
disclose which machine learning algorithm or define which type of machine
learning algorithm is used to show one of ordinary skill in the art that
Applicant had possession of the claimed invention.” Final Act. 6.
Appellant argues that the Examiner erred in rejecting claim 11
because this claim does not recite rules or a machine algorithm. Appeal Br.
15–16. We agree because claim 11 broadly recites the action of “updating a
personalized motion map” without specifying how this action is performed.
The Examiner does not adequately explain why, in order for claim 11 to
comply with the written description requirement, the Specification must
disclose how this action is performed.4 Accordingly, we do not sustain this
additional rejection of claim 11 as failing to comply with the written
description requirement.

4 We note that the rejection of claim 11 at issue is for failing to comply with
the written description requirement, not the enablement requirement.
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Claim 14
Claim 14 indirectly depends from claim 9 and recites, “generating a
profile for the user comprising a personalized emotion map; and applying
the personalized emotion map to a detected user behavior to infer an
emotional state of the user.” Appeal Br. 45 (Claims App.). The Examiner
quotes portions of paragraphs 30 and 44 of the Specification and concludes
that rules, psychological studies, and global offline training are not disclosed
sufficiently for the “generating” step in claim 14 to satisfy the written
description requirement.
We agree with Appellant that the Examiner’s reason for the rejection
of claim 14 relies on an unreasonably narrow interpretation of this claim.
See Appeal Br. 18. The broad recitations in claim 14 of generating and
applying are not limited to any particular algorithm or set of rules by the
plain language of the claim. The Examiner does not adequately explain why
further description of “rules” is necessary for the “creating” step in claim 14
to satisfy the written description requirement.
Rejection II—Ineligible Subject Matter
Appellant argues for the patentability of the claims subject to
Rejection II, i.e., claims 1–24, as a group. See Appeal Br. 20–36. We select
claim 1 as representative of the group, and claims 2–24 stand or fall with
claim 1.5

5 Although we appreciate that independent claim 1 is drawn to a computer
readable medium, we note that “the basic character of a process claim drawn to an
abstract idea is not changed by claiming only its performance by computers, or by
claiming the process embodied in program instructions on a computer readable
medium.” See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375–
76 (Fed. Cir. 2011) (citing In re Abele, 684 F.2d 902 (CCPA 1982).

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The Examiner states, “the instant claims are also directed to a judicial
exception, the abstract idea of determining an affective state of a user.”
Final Act. 8. The Examiner characterizes the step recited in the last
paragraph of claim 1 as requiring the step of “comparing” and determines
that the claimed subject matter is similar to that in, among other cases, Smart
Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364 (Fed.
Cir. 2017), Electric Power Group, LLC, v. Alstom, 830 F.3d 1350 (Fed. Cir.
2016), and In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent
Litigation, 774 F.3d 755 (Fed. Cir. 2014) (hereinafter “BRCA1- &
BRCA2”).6 Id. at 10–11, 30. Each of these cases involved patent-ineligible
claims directed to abstract ideas related to collection, storage, recognition,
and/or comparison of data, which have been described as a mental processes.
Smart Systems Innovations at 1372, Electric Power at 1354, and BRCA1- &
BRCA2 at 763–764. Thus, by grouping the rejected claims with these cases,
the Examiner implicitly finds that the claims recite a mental process.7
Appellant argues that claim 1 is not directed to an abstract idea
because it relates to an improvement to the technical field of machine
learning and recognition of user emotional reactions to content. See Appeal
Br. 28–36; Reply Br. 30–34. According to Appellant, claim 1 is patent-
eligible in the same way the claims were in McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). See Appeal Br. 28–
36; Reply Br. 30–34.

6 BRCA1- & BRCA2 is sometimes referred to as “Univ. of Utah Research
Found. v. Ambry Genetics Corp., 774 F.3d 755 (Fed. Cir. 2014).”
7 The Examiner explicitly describes the claims as relating to a mental
process on page 38 of the Answer.
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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. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (internal quotation marks and citation omitted).
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. See Alice, 573 U.S. 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.”
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) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
Concepts determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” (Diamond v.
Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making 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
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(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 (internal 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. (alteration in the 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 of 2019, the PTO published revised guidance on the
application of § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Memorandum”).
Under Step 2A of that 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 activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, 2018)).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, in 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.
See Memorandum.
Step 1 – Statutory Category
Claim 1 recites a computer-readable storage medium having
computer-readable instructions stored thereon. See Appeal Br. 42 (Claims
App.). Therefore, the subject matter of claim 1 falls within a statutory
category, namely, an article of manufacture.
Step 2A, Prong 1 – Recitation of Judicial Exception
Like independent claim 9, claim 1 includes a “determining” step.
Specifically, claim 1 recites instructions to “determine that the user
experiences one of the plurality of expected emotions stored by the data
storage device during presentation of subsequent content to the user if both
of [two] conditions are satisfied.” Id. Both of the conditions require each
member of a pair of parameters to be “the same.” See id. Specifically, the
first condition requires two content types to be the same. See id. The
second condition requires two portions of sensor data to be the same. See id.
The act of determining whether to parameters are the same involves
comparing these parameters.
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The process of comparing recited in claim 1 is similar to the patent
ineligible process recited in one of the claims at issue in BRCA1- &
BRCA2, which we reproduce below.
7. A method for screening germline of a human subject for
an alteration of a BRCA1 gene which comprises comparing
germline sequence of a BRCA1 gene or BRCA1 RNA from a
tissue sample from said subject or a sequence of BRCA1 cDNA
made from mRNA from said sample with germline sequences of
wild-type BRCA1 gene, wild-type BRCA1 RNA or wild-type
BRCA1 cDNA, wherein a difference in the sequence of the
BRCA1 gene, BRCA1 RNA or BRCA1 cDNA of the subject
from wild-type indicates an alteration in the BRCA1 gene in said
subject[,]
wherein a germline nucleic acid sequence is compared by
hybridizing a BRCA1 gene probe which specifically hybridizes
to a BRCA1 allele to genomic DNA isolated from said sample
and detecting the presence of a hybridization product wherein a
presence of said product indicates the presence of said allele in
the subject.
BRCA1- & BRCA2 at 761 (emphasis added). Thus, claim 7 of BRCA1- &
BRCA2 requires a comparison to two germline sequences and defines the
significance of the comparison result.
Holding claim 7 patent-ineligible, our reviewing court described the
comparison step as an abstract mental process of comparing and analyzing
two gene sequences. See BRCA1- & BRCA2 at 763–764. Although claim 7
of BRCA1- & BRCA2 compares things in order to find a difference, and
claim 1 on appeal compares things to determine whether they are the same,
both claims required, explicitly or implicitly, the step of “comparing” in
order to make a determination. Based on the similarity between the
comparing steps in Appellant’s claim 1 and in claim 7 of BRCA1- & BRCA2,
we agree with the Examiner that claim 1 recites a mental process. In other
words, the step of determining whether two collected pieces of information
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are the same in claim 1 amounts to a mental process. Further, we agree that
the recited mental process, in this context, is an abstract idea. Accordingly,
the outcome of our analysis under Step 2A, Prong 1, requires us to proceed
to Step 2A, Prong 2. See Memorandum, 84 Fed. Reg. at 54.
Step 2A, Prong 2 – Integrated Into a Practical Application
In Step 2A, Prong 2, 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. See Memorandum. This
evaluation requires an additional element or a combination of additional
elements in the claim to apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the
exception. See id. One of the ways a claim may integrate the exception into
a practical application is by making an improvement to another technology
or technical field. Memorandum at 55.
Regarding Appellant’s assertion that claim 1 provides an
improvement to a technical field, Appellant states, “separating the content
into a plurality of different segments, for each of which the content provider
can indicate an expected emotional response and a content type of the
segment, allows the computer to ‘confine its analysis to a narrower context
to achieve higher accuracy.’” Appeal Br. 29. Appellant further contends
“this enables the content providers flexibility to identify new expected
emotional responses that can be used by the computer on the fly, in contrast
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to previously known systems that require the computer to include limited
emotional responses that are hard-programmed into the system.”8 Id.
Appellant’s argument on this point is not persuasive because requiring
the segmentation of data to organize it for comparison is merely an
extension of the step of collecting information, which is part of the abstract
idea recited in claim 1.
Appellant argues that claim 1 is similar to the claim at issue in McRO
because the claims recite specific functional features combined
with specific architectural features leading up to a determination
that a user experiences one of a plurality of expected emotions.
Similar to the rules claimed in McRO, these specific functional
features are different from how a person would predict the
emotions of a person because a person would, rather than follow
the exact elements recited in claim 1, use subjective
determinations to determine an emotional state of a person. See
as-filed specification, ¶ [0012] (“Judging which emotions are
expressed at a particular time may be subjective (e.g., different
observers may judge differently) and the definition of any
affective state can be ambiguous (as perceived by humans).)”
Appeal Br. 34. Thus, Appellant asserts that claim 1 recites a process
different from the subjective process humans would use. Appellant states it
has submitted “evidence of record herein to support, that people use
subjective methods of determining emotional states of people.” Id. at 35.
This argument does not address, directly, the question of whether
claim 1 recites a comparison of data, whether the comparison amounts to
mental process, or whether the application of this mental process amounts to

8 Claim 1 recites, in part, “content comprising a plurality of different
segments of the content and content metadata, the content metadata
including data indicating a plurality of expected emotions and a plurality of
content types corresponding to the plurality of different segments of the
content.” Appeal Br. 42 (Claims App.).
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an improvement in another technological field. Even assuming for the sake
of argument, that, as argued by Appellant, the complete set of instructions
recited in claim 1 set forth a process that a human would not ordinarily do,
the specific comparison required by the last step of claim 1 is still one that a
human can mentally perform. Claim 1 specifies which information is to be
compared in order to complete the determining step, but such comparison
does not make the recited instructions an improvement to. Instead,
specifying the information to be compared amounts to applying a step of
comparing in a specific context. “Mayo made clear that transformation into
a patent-eligible application requires ‘more than simply stating the abstract
idea while adding the words ‘apply it.’” Alice, 573 U.S. at 221 (citing Mayo,
566 U.S. at 72). Accordingly, Appellant’s argument on this point falls short
of identifying Examiner error.
Appellant contends that claim 1 is directed to an improvement in
another technical field because it is similar to the claims in McRO. We
reproduce claim 1 of McRO below.
1. A method for automatically animating lip synchronization
and facial expression of three-dimensional characters
comprising:
obtaining a first set of rules that define output morph
weight set stream as a function of phoneme sequence and
time of said phoneme sequence;
obtaining a timed data file of phonemes having a plurality
of subsequences;
generating an intermediate stream of output morph weight
sets and a plurality of transition parameters between two adjacent
morph weight sets by evaluating said plurality of sub-sequences
against said first set of rules;
generating a final stream of output morph weight sets at a
desired frame rate from said intermediate stream of output morph
weight sets and said plurality of transition parameters; and
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applying said final stream of output morph weight sets to
a sequence of animated characters to produce lip synchronization
and facial expression control of said animated characters.
McRO at 1307–1308.
Appeal Br. 33–36. Similar to the assertion discussed above regarding
what a human would do, Appellant states:
The McRO Court held that the claims were patent eligible under
35 U.S.C. § 101 because the claims recited specific methods for
automatically performing lip synchronization and facial
expression animation (which had not previously been
automated), and a human artist would not use the specifically
claimed methods, and instead relied on subjective determinations
to perform the lip synchronization and animation.
Appeal Br. 33 (citing Memorandum, Regarding Recent Subject Matter
Eligibility Decisions, November 2, 2016 at 2, hereinafter, the “McRO
Memo”).
We disagree with Appellant’s contention because, as discussed above,
the instructions recited in claim 1 merely apply the determining step using
certain information. After this step, all that is created is other information.
This claim is more like claim 7 of BRCA1- & BRCA2 than the claim at issue
in McRO. In McRO, the Court said
the automation goes beyond merely “organizing existing
information into a new form” or carrying out a fundamental
economic practice. The claimed process uses a combined order
of specific rules that renders information into a specific format
that is then used and applied to create desired results: a sequence
of synchronized, animated characters.
McRO at 1315. Thus, the recited rules were used to create a desired
sequence of animated characters. In contrast, Appellant’s claim 1 concludes
with the instruction to make a determination, i.e., an instruction to
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“determine that the user experiences one of the plurality of expected
emotions.” Similarly, in BRCA1- & BRCA2, ineligible claim 1 required a
comparison to two germline sequences and then defined the significance of
the comparison result. See BRCA1- & BRCA2 at 761.
We disagree with Appellant’s argument that “the independent claims
are integrated into the practical application of presenting content to users,
machine learning of user emotional reactions to content presented to users,
and detecting emotional states of users as they consume content based on
that machine learning.” Reply Br. 30 (emphasis added). Step 2A, Prong 2
requires us to evaluate whether the abstract idea is integrated into a
practical application. That claim 1 instructs the processor to present content
to a user is merely the beginning step of collecting information that is later
used in the determining step. As for machine learning of user emotional
reactions and detecting emotional states of users as they consume content
based on the machine learning, claim 1 merely applies the required
comparison in the context of these functions without amounting a practical
integration.
Accordingly, we do not agree with Appellant’s contentions that claim
1 amounts to an improvement to a technical field.
We are not apprised of any reason claim 1 would be considered a
treatment or prophylaxis for a medical condition, requires a particular
machine or results in a transformation of the kind that confers patent
eligibility on the implementation of an abstract idea. We have considered all
of Appellant’s arguments as to Step 2A, Prong 2, but claim 1 does not
integrate the recited judicial exception into a practical application. Thus, we
proceed to step 2B.
Step 2B – Well-Understood, Routine, Conventional Activity
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Appellant contends claim 1 includes additional elements that were not
well-known, routine, or conventional. Appeal Br. 20–28.
Appellant notes that claim 1 requires a processor, a data storage
device, and sensors. See id. at 20–21. Appellant also states claim 1 requires
that “the content comprises ‘a plurality of different segments of the content
and content metadata,’ and that the content metadata includes ‘data
indicating a plurality of expected emotions and a plurality of content types
corresponding to the plurality of different segments of the content.’” Id. at
21. Appellant then concludes that these elements are not well-known,
routine or conventional. Id.
We do not agree that claim 1 recites any configuration of processors,
data storage, and sensors that is not well-known, routine, and conventional.
The processor, data storage, and sensor recited in claim 1 are recited without
significant limitations that would distinguish them from those commonly
used in the art.
As a corollary to Appellant’s argument regarding the use of a plurality
of different segments of the content and what is in the metadata, Appellant
states, “separating the content into a plurality of different segments, for each
of which the content provider can indicate an expected emotional response
and a content type of the segment, allows the computer to ‘confine its
analysis to a narrower context to achieve higher accuracy.’” Id. at 29 (citing
Spec. ¶ 31). Appellant contends “this enables the content providers
flexibility to identify new expected emotional responses that can be used by
the computer on the fly, in contrast to previously known systems that require
the computer to include limited emotional responses that are hard-
programmed into the system.” Id. Appellant goes on to tout the benefits the
claimed instructions provide. Id. at 29–30 (citing Spec. ¶¶ 23–24, 28).
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We do not agree with Appellant’s position regarding “separating
content.” See Appeal Br. 29. Separating the content in order to eventually
perform the determining step amounts to data gathering. “We have held that
mere ‘data-gathering steps cannot make an otherwise nonstatutory claim
statutory.’” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011). See also Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed, humans have always performed these functions.”).
Furthermore, a portion of Appellant’s argument is incongruent with the
scope of claim 1. In this regard, claim 1 does not recite that the instructions
stored on the computer-readable medium instruct the processor to “separate”
content into segments. Rather the pertinent paragraph of claim 1 recites that
the instructions are configured to instruct the processor to
present content received from a content provider to a user,
the content comprising a plurality of different segments of the
content and content metadata, the content metadata including
data indicating a plurality of expected emotions and a plurality
of content types corresponding to the plurality of different
segments of the content.
Appeal Br. 42 (Claims App.) (emphasis added). Thus, the different
segments are present in the received content. Independent claims 9 and 17
recite similar language. Id. at 44, 46.
Appellant also restates the determining step in claim 1 and then argues
this step “confine[s] the claims to the particular useful application of
machine learning and recognition of user emotional reactions to content.
Also, this specific combination of these architectural and functional features
was not well-known, routine, or conventional.” Appeal Br. 22.
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This argument is unavailing because the determining step merely
compares data, as discussed above. Even assuming that comparison of the
particular data recited in claim 1 was not well-known, routine, and
conventional, this comparison still amounts to an abstract idea. Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“But,
a claim for a new abstract idea is still an abstract idea.”); Versata Dev. Grp.,
Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (affirming
unpatentability of claims that improved an abstract idea, but not a
computer’s performance).
Appellant also argues that the Examiner has not provided sufficient
evidence to show that certain elements of the claims were well-known,
routine, or conventional. See Appeal Br. 23–28. Appellant then quotes
certain portions of claim 1 and concludes that these limitations are not well-
known, routine, or conventional. See id. Appellant also contends that the
claimed instructions in claim 1 describe a method different from what a
person would do. Specifically, Appellant states:
There is factual support on the record for the assertion that
“a person would, rather than follow the exact elements recited in
claim 1, use subjective determinations.” For example, the as-
filed specification states in ¶ [0012] that “[j]udging which
emotions are expressed at a particular time may be subjective
(e.g., different observers may judge differently) and the
definition of any affective state can be ambiguous (as perceived
by humans).” As a result, the factual evidence of record supports
the assertion that the way a person judges the emotions of other
people includes a subjective element. As a result, since the exact
elements recited in claim 1 do not include a subjective element,
the conventional mental process a person undergoes for
determining the emotions of other people is not the same as the
exact functional elements recited in claim 1.
Appeal Br. 25.
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This argument is unpersuasive. Even assuming for the sake of
argument that the process a person conventionally uses for determining the
emotions of other people is not the same as the exact functional elements
recited in claim 1, the determining step recited in claim 1 still amounts to a
step of comparing information. In other words, claim 1 recites an abstract
idea. Appellant’s argument in this regard relies on the unconventionality of
the abstract idea, which, as discussed above, is not enough to transform the
claimed subject matter into something patent-eligible.
We have considered all of Appellant’s arguments in support of the
patent-eligibility of claim 1, but find them unpersuasive. Accordingly, we
sustain the rejection of claims 1–24 as being directed to a judicial exception
without significantly more.
Rejection III–Anticipation by Aravkin
The Examiner finds that Aravkin discloses all the elements recited by
claim 1, including content, received from a content provider, that includes
metadata indicating a plurality of expected emotions. Final Act. 14. The
Examiner finds that column 6, lines 54–58 and column 7, lines 66–8:3 of
Aravkin imply “that contextual information (content metadata) received
from the content provider with the content includes data indicating a
plurality of expected emotions and a plurality of content types corresponding
to the plurality of different segments of the content.” Id. (emphasis added)
Appellant argues that Aravkin does not disclose that the content
received from the content provider includes metadata indicating a plurality
of expected emotions. Appeal Br. 36–37. Specifically, Appellant argues
that the metadata described in column 7 of Aravkin indicates a plurality of
expected emotions, but this data is added after receipt of the content.
Appeal Br. 36–37.
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In response, the Examiner quotes column 8, lines 1–6, of Aravkin and
states:
[a]s Aravkin explicitly recites that predicting emotional reaction
to received data content can be based on the contextual
information contained within received data content, and does not
limit what contextual information entails regarding expected
emotion and content type for the segments of the content,
Aravkin also allows the “content provider” to indicate, in the
content metadata, any expected emotion and content type for the
segments of the content. As a result, the Aravkin also allows the
content provider to introduce a newly identified expected
emotion or content type into the system merely through including
the information in the metadata of the content without accessing
the programming of the receiving device.
Ans. 56. Thus, the Examiner finds (i) that Aravkin bases the addition of data
indicating expected emotions on contextual data that is received with the
content, and (ii) Aravkin allows a content provider to include, in the
content’s metadata, data indicating expected emotions.
In reply, Appellant asserts that the metadata described in column 6 of
Aravkin does not indicate a plurality of expected emotions, and, instead,
merely describes other characteristics of the content (such as who sent the
content). Reply Br. 38–39. Appellant also reiterates that in column 7,
Aravkin discloses a process that occurs only after the content is received.
Id. at 39–40. Thus, according to Appellant, the disclosure in column 6 of
Aravkin fails to include data identifying expected emotions, and the
disclosure in column 7 of Aravkin fails to relate to what the content
“received” from the content provider includes.
Appellant has the better position. First, the cited portion of column 8
of Aravkin discussing emotional reactions and the cited disclosure in column
7 relate to information added to the content after it is received. Aravkin’s
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disclosure that this information may be based on contextual information
included in the received content does not equate to a disclosure that data
indicating expected emotions is included in the received content.
Second, the fact that Aravkin does not prohibit the content provider
from including metadata indicating expected emotions is not the same as a
disclosure that the content provide includes such metadata with the content.
Rather, as Appellant argues, Aravkin merely discloses that the content
includes metadata indicating other information, such as who sent the
content. See Aravkin 6:50–62. Accordingly, we do not sustain the rejection
of claim 1, and claims 2–8 depending therefrom, as anticipated by Aravkin.
Independent claims 9 and 17 recite substantially similar limitations to the
one discussed above regarding claim 1, and, for the same reasons, we do not
sustain the rejection of claims 9–18 and 21–24 as anticipated by Aravkin.
Rejection IV—Aravkin and Leurs
The Examiner does not rely on the disclosure of Leurs in any manner
that would remedy the deficiency discussed above regarding the rejection of
claims 1–18 and 21–24 as anticipated by Aravkin. See Final Act. 26–27.
Consequently, we do not sustain the rejection of claims 19 and 20 as
unpatentable over Aravkin and Leurs.

CONCLUSION
The Examiner’s rejections are affirmed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1–24 112(a) Written Description  1–16 17–24
1–24 101 Eligibility  1–24
1–18, 21–24 102(a)(2) Aravkin 1–18, 21–
24
19, 20 103 Aravkin, Leurs 19, 20
Overall
Outcome
1–24

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED