Ex parte Benway

• Decision Date: 02 May 2019
• Docket Number: Application 14/243,814,Appeal 2018-004827
• Parties: Ex parte EVAN HARRIS BENWAY and ERIK PEROTTI Technology Center 2600
• Court: Patent Trial and Appeal Board

Ex parte EVAN HARRIS BENWAY and ERIK PEROTTI Technology Center 2600

Appeal 2018-004827

Application 14/243, 814

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 2, 2019

FILING DATE: 04/02/2014

Before JOHN A. JEFFERY, DENISE M. POTHIER, and JUSTIN BUSCH Administrative Patent Judges.

DECISION ON APPEAL

POTHIER, ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Appellants^[1],^[2] appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-15 and 17-22. Appeal Br. 1. Claim 16 has been canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm-in-part.

Invention

Sound masking-introducing constant background noise to reduce undesirable sounds and increase privacy and comfort-is increasingly incorporated into workplaces. Spec. ¶ 3. According to the Specification, proper sound masking levels for designing a sound masking system are typically set during installation and infrequently adjusted. Id. ¶ 4. But, setting sound masking levels in this manner does not account for office noise fluctuations over time and by location. Id. Appellants' invention aims to improve on current noise management systems. Id. ¶¶ 5-6, l 8. In one example, an application program receives noise level measurements taken at mobile devices at different locations and adjusts the masking volume level output using a noise masking system. Id. ¶¶ 22, 35-36, Fig. l.

Independent claim l exemplifies the claims at issue and reads as follows:

1. A method comprising:

receiving over an electronic communications link a plurality of noise level measurements taken with a plurality of microphones at a plurality of mobile devices located within a same building space;

receiving a plurality of location data, comprising receiving a location data associated with each mobile device in the plurality of mobile devices located within the same building space;

generating a map with a computing device, the map based upon the plurality of noise level measurements and the plurality of location data; and

electronically adjusting an output of a sound masking noise utilizing the plurality of noise level measurements.

Appeal Br. 27 (Claims App'x).

The Examiner relies on the following as evidence of unpatentability:

L'Esperance

US 2006/0009969 A1

Jan. 12, 2006

Barbieri

US 2007/0053527 A1

Mar. 8, 2007

Lloyd

US 2011/0307253 A1

Dec. 15, 2011

Swierk

US 2015/0179186 A1

June 25, 2015 (filed Dec. 20, 2013)

Gopalakrishnan

US 9, 183, 845 B1

Nov. 10, 2015 (filed June 12, 2012)

The Rejections

Claims 1-15 and 17-22 are rejected under 35 U.S.C. § 101 as being directed to an abstract idea without significantly more. Final Act. 6-7.

Claims 1-5, 7-14, and 17-22 are rejected under 35 U.S.C. § 103 as being unpatentable over Swierk, Barbieri, and L'Esperance. Final Act. 7-11.

Claims 5 and 14 are additionally rejected under 35 U.S.C. § 103 as being unpatentable over Swierk, Barbieri, L'Esperance and Lloyd. Final Act. 11-12.

Claims 6 and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over Swierk, Barbieri, L'Esperance, and Gopalakrishnan. Final Act. 12-13.

THE PATENT-ELIGIBILITY REJECTION

The Examiner determines that the claims are directed to an abstract idea of measuring noise levels and adjusting accordingly. Final Act. 4, 6. The Examiner indicates the claimed steps can be performed by the human mind and are essentially mental processes. Final Act. 4; Ans. 3-4. The Examiner also determines that the claims do not include additional elements that add significantly more than the abstract idea but rather merely recite conventional computer functions. Final Act. 6; Ans. 4-5. Based on these determinations, the Examiner concludes that the claims are ineligible under § 101. Final Act. 6.

Appellants argue that the claimed invention is not directed to an abstract idea. See Appeal Br. at 7-10. According to Appellants, the Examiner fails to account for the specific recited limitations that are not directed to an abstract idea, and these limitations add significantly more to the purported abstract idea to render the claims eligible. See id. at 10-11.

We select independent claim 1 as illustrative.

ISSUE

Under § 101, has the Examiner erred in rejecting the claims by determining that the claims are directed to judicially excepted, patent ineligible subject matter?

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. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185(1981)).

In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217-18 (2014) (citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 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, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding of rubber products" (Diehr, 450 U.S. at 193); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).

In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held 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."). That said, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract... is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. (citing Benson and Flook); but see 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. (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. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under 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 activities such as a fundamental economic practice, or mental processes) (Revised Guidance, 84 Fed. Reg. at 52-54) ("Revised Step 2A- Prong 1"); 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)) (Revised Guidance, 84 Fed. Reg. at 53-65) ("Revised Step 2A - Prong 2").

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, and conventional in the field (see MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.

See Revised Guidance, 84 Fed. Reg. at 56 ("Step 2B").

ANALYSIS

Alice Step One

We must determine whether claim 1 as a whole is directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217. To this end, we determine (1) whether claim 1 recites a judicial exception (Revised Step 2 A - Prong 1, ) and, if so, (2) whether the identified judicial exception is integrated into a practical application (Revised Step 2A - Prong 2). See Revised Guidance 84 Fed. Reg. at 52-65.

Revised Step 2A - Prong 1

In Revised Step 2A - Prong 1, we identify...