Ex Parte Nikoulina et al

Patent Trial and Appeal Board

Jan 17, 2017

13707745 (P.T.A.B. Jan. 17, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/707,745 12/07/2012 Vassilina Nikoulina 20121079US01-XER2957US01 1714
62095 7590 01/17/2017
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
OPSASNICK, MICHAEL N
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
01/17/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VASSILINA NIKOULINA and AGNES SANDOR
Appeal 2016-003107
Application 13/707,745
Technology Center 2600
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—12 and 14—21. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 13, 22, and 23 are canceled. See Response to Non-Final Action 5, 8,
9 (filed Jan. 9, 2015).
We affirm and designate our affirmances as new grounds of rejection
within the provisions of 37 C.F.R. § 41.50(b) (2014).
1 According to Appellants, the real party in interest is Xerox Corporation.
App. Br. 1.
Appeal 2016-003107
Application 13/707,745
STATEMENT OF THE CASE
The Invention
Appellants’ invention “relates to machine translation and finds
particular application in connection with a system and method for named
entity recognition.” Spec. 11. Claims 1, 12, 14, and 17 are independent, of
which claims 1 and 14 are illustrative of the subject matter on appeal:
1. A machine translation method comprising:
[a] receiving a source text string in a source language;
[b] identifying named entities in the source text string;
[c] optionally, processing the identified named entities to
exclude at least one of common nouns and function words from
the named entities;
[d] extracting features from the optionally processed
source text string relating to the identified named entities;
[e] with a processor, for at least one of the named
entities, based on the extracted features, selecting a protocol for
translating the source text string, the protocol being selected
from a plurality of translation protocols; and
[f] outputting the target text string produced by the
selected protocol,
[g] wherein when a first of the translation protocols is
selected, the method includes:
[gl] forming a reduced source string from the
source text string in which the named entity is replaced
by a placeholder;
[g2] translating the reduced source string with a
machine translation system to generate a translated
reduced target string,
[g3] processing the named entity separately, and
[g4] incorporating the processed named entity into
the translated reduced target string to produce a target
text string in the target language; and
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[h] when a second of the translation protocols is selected,
the method includes:
[hi] translating the source text string with a
machine translation system, without replacing the named
entity with the placeholder, to produce a target text string
in the target language.
See App. Br. 15—16 (Claims App’x) (bracketed letters added for ease of
reference).
14. A machine translation system comprising:
a named entity recognition component for identifying
named entities in an input source text string in a source
language;
optionally, a rule applying component which applies
rules for processing the identified named entities to exclude at
least one of common nouns and function words from the named
entities;
a feature extraction component for extracting features
from the optionally processed source text string relating to the
identified named entities;
a prediction component for selecting a translation
protocol for translating the source string based on the extracted
features, the translation protocol being selected from a set of
translation protocols including a first translation protocol in
which the named entity is replaced by a placeholder to form a
reduced source string, the reduced source string being translated
separately from the named entity, and a second translation
protocol in which the source text string is translated without
replacing the named entity with the placeholder, to produce a
target text string in the target language; and
a machine translation component for performing the
selected translation protocol; and
a processor for implementing at least one of the
components.
See id. at 19—20 (Claims App’x).
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The Rejections
Claims 1—12 and 14—21 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. See Ans. 2.
The Record
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed July 17, 2015; “Reply Br.” filed Jan. 22, 2016) and the
Specification (“Spec.” filed Dec. 7, 2012) for the positions of Appellants and
the Final Office Action (“Final Act.” mailed Feb. 26, 2015) and Answer
(“Ans.” mailed Nov. 30, 2015) for the reasoning, findings, and conclusions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. §41.37(c)(l)(iv).
ISSUE
The issue presented by Appellants’ contentions is as follows: Does
the Examiner err in concluding claims 1, 12, 14, and 17 are directed to non-
statutory subject matter?
ANALYSIS
Claims 1—12
The Examiner concludes that independent claim 1 is directed to
nonstatutory subject matter because the claim as a whole does not amount to
significantly more than the abstract idea of calculating language translation
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parameters. See Ans. 2. We agree with the Examiner that claim 1 is
directed to an ineligible abstract idea.
To resolve the question of patentability under § 101, we first construe
the claim. Here, claim 1 recites a machine translation method, the method
including an optional step as well as steps that require performance only
when certain conditions precedent are met. See App. Br. 15—16. For
example, claim 1 recites, in pertinent part:
[c] optionally, processing the identified named entities to
exclude at least one of common nouns and function words from
the named entities; . . .
[e]. . . selecting a protocol for translating the source text
string, the protocol being selected from a plurality of translation
protocols; . . .
[g] wherein when a first of the translation protocols is
selected, the method includes: . . .
[gl] forming . . . ;
[g2] translating . . . ,
[g3] processing . . ., and
[g4] incorporating . . . ; and
[h] when a second of the translation protocols is selected,
the method includes:
[hi] translating the source text string with a
machine translation system, without replacing the named
entity with the placeholder, to produce a target text string
in the target language.
App. Br. 15—16 (Claims App’x) (emphasis added). First, because in step [c],
“processing” is only “optionally” performed, step [c] does not need to be
performed to practice the claimed invention. Cf. In re Johnston, 435 F.3d
1381, 1384—85 (Fed. Cir. 2006) (affirming the rejection of a dependent
claim reciting only an optional element as anticipated because “optional
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elements do not narrow the claim because they can always be omitted”).
Second, in accordance with the plain language of steps [e], [g], and [h] the
claim is met by performing either step [g] or step [h]. In fact, because the
recited “plurality of translation protocols” in step [e] is not limited to the
first and second protocols, the claim is met by performing an unrecited
protocol that performs neither step [g] nor [h]. See, e.g., Spec. 138 (“while
two translation protocols are exemplified, there may be more than two, for
example, where there is more than one type of NEP [named entity
processing] component”).
Regarding the recited protocols, claim 1 provides “when [the] second
of the translation protocols is selected,” as recited in step [h], the source
input string is translated without replacing the named entity with the
placeholder (substep [hi]); the forming, translating, processing, and
incorporating operations (substeps [gl]—[g4]), which occur only “when a
first of the translation protocols is selected” (step [g]), do not need to be
performed. See, e.g., Fig. 1, Spec. ^fl[ 36—38. Therefore, in accord with our
precedent, a broad but reasonable interpretation of claim 1 encompasses a
method in which only steps [a], [b], [d], [e], [f], and [h] are performed. See
Ex Parte Schulhauser et al., Appeal 2013-007847, 2016 WL 6277792, at
*3—5 (precedential) (PTAB Apr. 28, 2016) (finding that in a method claim, a
step reciting a condition precedent does not need to be performed if the
condition precedent is not met); see also Ex Parte Fleming, Appeal 2014-
002849, 2014 WL 7146104 (PTAB Dec. 12, 2014) (expanded panel decision
on rehearing); Ex Parte Urbanet, Appeal 2011-002606, 2012 WL 4460637
(PTAB Sept. 19, 2012); Ex Parte Katz, Appeal 2010-006083, 2011 WL
514314 (BPAI Jan. 27, 2011). For the same reasons discussed above, the
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broadest reasonable interpretation of claim 1 also encompasses (i) a method
in which only the first protocol is selected and only steps [a], [b], [d], [e], [f],
and [g] are performed, and (ii) a method in which neither the first nor second
protocol is selected and only steps [a], [b], [d], [e], and [f] are performed.
Having determined the scope of claim 1, we consider the issue of
statutory subject matter under 35 U.S.C. § 101. To be statutorily patentable,
the subject matter of an invention must be a “new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that
there are implicit exceptions to the categories of patentable subject matter
identified in § 101, including (1) laws of nature, (2) natural phenomena, and
(3) abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347,
2355 (2014). Further, the Court has “set forth a framework for
distinguishing patents that claim [1] laws of nature, [2] natural phenomena,
and [3] abstract ideas from those that claim patent-eligible applications of
those concepts.” Id., citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289 (2012). The evaluation follows the two-
part analysis set forth in Mayo: 1) determine whether the claim is directed to
an abstract idea; and 2) if an abstract idea is present in the claim, determine
whether any element, or combination of elements, in the claim is sufficient
to ensure that the claim amounts to significantly more than the abstract idea
itself. See Alice, 134 S. Ct. at 2350.
Claim 1 is directed to a process, which is one of the four statutory
classes. Following the Court’s guidance, we turn to the first step of the
Mayo!Alice analysis to determine if the claim is directed to one of the
judicial exceptions, i.e., an abstract idea.
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Appellants’ invention involves translating a source text string in a
source language into a target test string in a target language. Abstract; Spec.
13, 15. Claim 1 requires, in essence, receiving a source text string in a
source language; identifying named entities in the source text string;
extracting features from the source text string relating to the identified
named entities; based on the extracted features, selecting a protocol for
translating the source text string, the protocol being selected from a plurality
of translation protocols; and translating the source text string with a machine
translation system to produce a target text string in the target language. See
App. 15—16. Claim 1 is not directed to specific computer or network
technology, but rather recites generalized steps relating to a translation
process for which a machine, e.g., a computer, is used in its ordinary
capacity as a tool. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335—36 (Fed. Cir. 2016) (“[T]he first step in the Alice inquiry . . . asks
whether the focus of the claims is on the specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
‘abstract idea’ for which computers are invoked merely as a tool.”).
Appellants contend claim 1 is not directed to an abstract idea because,
inter alia, claim 1 ’s recitation of machine translation using different
protocols does not neatly fall within one of the categories identified in Alice
as abstract ideas, such as a mathematical formula, a fundamental economic
practice, or an algorithm itself. See Reply Br. 8—10; App. Br. 8. We
disagree with Appellants’ contention. The process required by claim 1 is
directed to the computerization of the well-established and fundamental
practice of translation. Similarly, in Novo Transforma Technologies, LLC v.
Sprint Spectrum L.P., 2015 WL 5156526 (D. Del. 2015), aff’d,___ Fed.
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Appx.___ (Fed. Cir. 2016), at issue were claims directed to a computer
system that received a payload in one media form, translated it into a
different media form, and delivered the translated payload. See id. at *3.
The court in Novo held the claims to be directed to an ineligible abstract idea
no different from the function of a translator, stating that “[ijncompatible
communication types have existed since before the emergence of computers
and the Internet. Translators have been used for centuries to facilitate
communication between individuals who speak different languages. The
translator receives a message in one language, translates it into another, and
delivers the translated message.” Id.
Here, applying relevant precedent, we conclude that claim 1, similar
to the claims at issue in Novo, is directed to the abstract idea of translation.
See Enfish, 822 F.3d at 1334 (in determining whether the claims at issue are
directed to an abstract idea, “both this court and the Supreme Court have
found it sufficient to compare claims at issue to those claims already found
to be directed to an abstract idea in previous cases”); OIP Technologies, Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015).
Turning to the second step of the Mayo!Alice analysis, we analyze the
claim as a whole to determine whether any element, or combination of
elements, is sufficient to ensure that the claim amounts to significantly more
than the exception. Here, Appellants contend “[t]he process of claim 1 does
sufficiently more than an abstract idea and thus transforms any abstract idea
that there may be into patent eligible subject matter. It specifically
implements different translation processes depending on which protocol is
selected, which is based on extracted features” (Reply Br. 11). See id. at 11—
12; App. Br. 9-10. Accordingly, Appellants contend that “conventional
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processes for machine translation do not involve [the method of claim 1].”
Reply Br. 11.
We disagree with Appellants’ contentions. As discussed above, a
broad but reasonable interpretation of claim 1 encompasses the selection and
implementation of, for example, the second translation protocol only.
Therefore, contrary to Appellants’ contentions, claim 1 can be fully
performed by implementing a single conventional translation process in
which the source text string is translated into a target text string of the target
language without replacing the named entity with the placeholder. See App.
Br. 15—16. Furthermore, basing the selection of a translation protocol on
“extracted features” from the source text string is nothing more than a
conventional step familiar to anyone who has manually translated a
document from one language to another. For example, a translator would
know to account for a named entity in a source document by either leaving it
in the source language or translating it to the target language, based on
nature of the named entity (“extracted feature”). See Spec. ]Hf 4 (stating that
“[t]he correct treatment of named entities is not an easy task for statistical
machine translation (SMT) systems,” suggesting that manual translations
can more easily treat named entities) (emphasis added), 78 (“The method
can be extended for the case when multiple NE translation systems 34 are
available: e.g., do not translate/transliterate (e.g., for person names)”).
Appellants further contend that selecting a protocol and translating
data from one language to another with a machine translation system
“transform[s] the input source language string into a different state or
thing[—]a translated target language string.” Reply Br. 12. We disagree
with Appellants’ contention. Although the “target language string” is in a
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different language than the “input language string,” this does not amount to a
transformation into a different state or thing because both the input and
target language strings are still data strings. Contra In reAbele, 684 F.2d
902, 908—909 (C.C.P.A.1982) (holding that the transformation of raw data
into a particular visual depiction of a physical object on a display was
sufficient to render the process claim at issue patent-eligible). Moreover,
even if we were to consider the translation of data strings to be a
transformation, this would be insufficient to render claim 1 patent-eligible
because the claim does not require significantly more than the generic
computer implementation of a known manual method of manipulating data,
i.e., translation. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014) (“[Satisfying the machine-or-transformation
test, by itself, is not sufficient to render a claim patent-eligible, as not all
transformations or machine implementations infuse an otherwise ineligible
claim with an inventive concept.”) (quotations omitted).
Next, Appellants contend that claim 1 “provide[s] an inventive
concept since [it has] been found allowable under sections § 102 and § 103
[sic]” (Reply Br. 13). See id. at 13—14; App. Br. 10. We disagree with
Appellants’ contention because controlling precedent makes clear that § 101
is a threshold inquiry separate from § 102 and § 103. Bilski v. Kappos, 561
U.S. 593, 602 (2010); Classen Immunotherapies, Inc. v. Biogen IDEC, 659
F.3d 1057, 1064 (Fed. Cir. 2011) (applying Bilski). Indeed, as found by the
Supreme Court in Diamond v. Diehr, 450 U.S. 175 (1981), “[t]he question
therefore of whether a particular invention is novel is ‘wholly apart from
whether the invention falls into a category of statutory subject matter.’”
Diehr, 450 U.S. at 190, quoting In re Bergy, 596 F.2d 952, 961 (CCPA
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1979) (emphasis deleted); accordBilsko, 561 U.S. at 602.
In addition, Appellants contend that claim 1 is patent-eligible because
it is confined to a particular useful application and does not unduly preempt
every application of machine translation. See Reply Br. 14—15; App. Br.
10-11. Appellants assert claim 1 recites specific limitations, “such as
selecting a protocol [from a plurality of translation protocols] for translating
the source text string based on the extracted features .... Asa result, the
present claims include ‘additional features’ that ensure the claims are ‘more
than a drafting effort designed to monopolize the’ alleged abstract idea.”
Reply Br. 14 (quoting Alice, 134 S.Ct. at 2357) (emphasis omitted).
We disagree with Appellants’ contention. As discussed above, the
claim elements Appellants purport to be “additional features” are either
conventional or not required by claim 1. Therefore, because claim 1 does
not require significantly more than a generic computer implementation of
the known manual method of translation, we decline to conclude that claim 1
is patent-eligible lest we “risk disproportionately tying up the use of the
underlying [abstract idea], inhibiting [its] use in the making of further
discoveries.” Mayo, 132 S. Ct. at 1294.
Lastly, Appellants’ contention that claim 1 “cannot be considered
unpatentable because [it is] performed by a computer” is unpersuasive. See
App. Br. 12; Reply Br. 15—16. As recognized by the Supreme Court, “the
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention,” Alice, 134 S. Ct. at 2358; see
also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014)
(claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet not patent-
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eligible); andDealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir.
2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible.” (internal citation omitted)).
Accordingly, we conclude the method of claim 1 is directed to a
patent-ineligible abstract idea and requires no element or combination
of elements that amounts to significantly more than the abstract idea.
Moreover, as discussed infra regarding claim 14, even if the method
of claim 1 were to require performance of conditional step [g]
(including substeps [gl]—[g4]), claim 1 still would be directed to a
patent-ineligible abstract idea. Therefore, we sustain the rejection of
representative claim 1. Regarding dependent claims 2—11 (which
stand or fall with claim 1), for the same reasons discussed regarding
claim 1, we sustain the rejection. See App. Br. 7—12; Reply Br. 7—16.
We also sustain the rejection for the computer program product of
independent claim 12, whose instructions, when executed, perform a
method similar in scope to that of claim 1. See Ex Parte Kamuf
Appeal 2015-002645, 2016 WL 4710145, at *3 (PTAB Aug. 31,
2016) (non-precedential).
Because our analysis deviates from the reasoning in the
Examiner’s Final Rejection and Answer (see Final Act. 2; Ans. 2—6),
however, we designate our affirmance as a new ground of rejection
within 37 C.F.R. § 41.50(b).
Claims 14—16
The Examiner concludes that machine translation system of claim 14
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is directed to nonstatutory subject matter because the claim as a whole does
not amount to significantly more than the abstract idea of calculating
language translation parameters. See Ans. 2. Appellants reiterate the
contentions advanced for claim 1 and additionally contend claim 14 satisfies
the requirements of § 101 because “[t]he process of selecting and
implementing a translation protocol recited in claim 14 entails significantly
more than simply calculating language translation parameters . . . [by]
implementing different translation protocols.” Reply Br. 17; App. Br. 12.
Claim 14 recites, inter alia,
[a] machine translation system comprising: . . .
a prediction component for selecting a translation
protocol for translating the source string based on the extracted
features, the translation protocol being selected from a set of
translation protocols including a first translation protocol in
which the named entity is replaced by a placeholder to form a
reduced source string, the reduced source string being translated
separately from the named entity, and a second translation
protocol in which the source text string is translated without
replacing the named entity with the placeholder, to produce a
target text string in the target language; and
a machine translation component for performing the
selected translation protocol. . . .
App. Br. 19—20. Here, unlike method claim 1, which is written in a manner
that does not require all of the steps to be performed should the condition
precedent not be met, we interpret the machine translation system of claim
14 as requiring each component to be capable of performing each of its
recited functions should the conditions precedent occur. See Schulhauser,
2016 WL 6277792, at *7. Therefore, in determining whether claim 14
satisfies the requirements of 35 U.S.C. § 101, we must consider each of the
recited components’ functions, including the prediction component’s
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capability to select, from a set of translation protocols: (1) a first translation
protocol; and (2) a second translation protocol; as well as the machine
translation component’s capability to perform: (1) the first translation
protocol; and (2) the second translation protocol. Accord Spec. H 31 (“In
some embodiments, the adapted SMTNE machine translation model may be a
hybrid SMT model which is adapted to handle both placeholders and
unreplaced named entities.”), 38 (“a hybrid translation model SMTNE is
applied which is adapted to handling both placeholders and named entities”),
64, 120.
Having established the scope of claim 14, we now turn to the issue of
statutory subject matter under 35 U.S.C. § 101. Although claim 14 is
directed to a machine, which is one of the four statutory classes, we turn to
the first step of the MayolAlice analysis to determine if the claim is directed
to one of the judicial exceptions, i.e., an abstract idea. “We . . . look to
whether the claim[] . . . focus[es] on a specific means or method that
improves the relevant technology or [is] instead directed to a result or effect
that itself is the abstract idea and merely invoke[s] generic processes and
machinery.” McRO, Inc. v. Bandai Namco Games America, 837 F.3d 1299,
1314 (Fed. Cir. 2016) (citing Enfish, 822 F.3d at 1336) (additional citation
omitted). Here, for reasons similar to those discussed supra regarding claim
1, we conclude that claim 14 is directed to the abstract idea of translation.
See discussion regarding claim 1, supra.
Turning to the second step of the Mayo/Alice analysis, we first note
that claim 14 recites various elements, including a “rule applying
component,” “feature extraction component,” “prediction component,” and
“second translation protocol,” which do not amount to “significantly more”
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than the abstract idea for reasons similar to those discussed supra regarding
claim 1, steps [c], [d], [e], and [h](including substep [hi]), respectively. See
discussion regarding claim 1, supra. Furthermore, we conclude claim 14’s
recitation of “a first translation protocol” also does not amount to
“significantly more” than the abstract idea of translation. The “first
translation protocol[’s]” acts of replacing a named entity with a placeholder
to form a reduced source string and translating the reduced source string
separately from the named entity are nothing more than conventional steps
familiar to anyone who has manually translated a document from one
language to another. For example, if a translator were to encounter an
unknown foreign name in a source document, instead of translating the
name, it is commonplace for the translator to merely make a mental note that
the name is unknown and continue to translate the remainder of the
document. Further evidence that claim 14’s “first translation protocol” is
not “significantly more” is Appellants’ own admission that such a translation
protocol was known in the art at the time of invention. See Spec. | 6
(disclosing that a “named entity translation . . . can . . . replaced by a fake
(non-translatable) value to be re-inserted, which is replaced by the initial
named entity once the translation is done, as described in Jon Tinsley, et al.,
“PLUTO: automated solutions for patent translation,” Proc. Workshop on
ESIRMT and TyTra, pp. 69-71, April 2012”). Lastly, claim 14’s recitation
of a “machine translation component” and a “processor” do not amount to
“significantly more” as these limitations “merely invoke generic . . .
machinery.” McRO, 837 F.3d at 1314; Alice, 134 S. Ct. at 2358; see also
Ultramercial, 772 F.3d at 715—16; Dealertrack, 674 F.3d at 1333—34.
Accordingly, we conclude that the machine translation system
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of claim 14 is directed to a patent-ineligible abstract idea and requires
no element or combination of elements that amounts to significantly
more than the abstract idea. Therefore, we sustain the rejection of
claim 14. See App. Br. 13; Reply Br. 17. Regarding dependent
claims 15 and 16 (which stand or fall with claim 14), for the same
reasons discussed regarding claim 14, we sustain the rejection. See
App. Br. 13; Reply Br. 17. Because our analysis deviates from the
reasoning in the Examiner’s Final Rejection and Answer (see Final
Act. 2; Ans. 2—7), however, we designate our affirmance as a new
ground of rejection within 37 C.F.R. § 41.50(b).
Claims 17—21
The Examiner concludes that method for forming a machine
translation system of claim 17 is directed to nonstatutory subject matter
because the claim as a whole does not amount to significantly more than the
abstract idea of calculating language translation parameters. See Ans. 2.
Appellants reiterate the contentions advanced for claim 1 and additionally
contend claim 17 satisfies the requirements of § 101 because “[ljeaming a
prediction model based on the extracted features and translation scores
requires significantly more than simply calculating language translation
parameters, as the Examiner contends.” Reply Br. 17; App. Br. 13.
We find Appellants’ contentions unpersuasive. Although claim 17 is
directed to a process, which is one of the four statutory classes, we turn to
the first step of the Mayo/Alice analysis to determine if the claim is directed
to one of the judicial exceptions, i.e., an abstract idea. Claim 17 requires, in
essence, learning a prediction model for predicting a suitable translation
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protocol and applying the prediction model to select one of the translation
protocols. See App. Br. 20-21. Claim 17 is not directed to specific
computer or network technology, but rather recites generalized steps relating
to learning and applying a prediction model for which a machine, e.g., a
computer, is used in its ordinary capacity as a tool. Accordingly, we
conclude claim 17 is directed to an abstract idea of comparing information
and using rules to identify the best option. Similarly, in SmartGene, Inc. v.
Advanced Biological Laboratories, SA, 555 Fed. Appx. 950 (Fed. Cir.
2014), our reviewing court found claims that compared treatment
information and rules to identify a ranked listing of therapeutic treatment
regimens for a patient to be directed to an ineligible abstract idea, i.e.,
“comparing new and stored information and using rules to identify medical
options.” SmartGene, 555 Fed. Appx. at 955; see also discussion regarding
claim 1, supra.
Turning to the second step of the Mayo!Alice analysis, we analyze
claim 17 as a whole to determine whether any element, or combination of
elements, is sufficient to ensure that the claim amounts to significantly more
than the exception. Here, the claim does not have any such elements that
provide “significantly more” than “well-understood, routine, conventional
activity.” Mayo, 132 S.Ct. at 1294, 1298—99. First, the claim recites
“optionally, providing rules,” which is an optional step that does not need to
be performed. Cf. In re Johnston, 435 F.3d at 1384—85. Additionally, the
claim recites learning a prediction model by extracting features from
“optionally processed” source text strings and computing a score for a target
text string, which is nothing more than “a routine mental information-
comparison and rule-application process,” SmartGene, 555 Fed. Appx. at
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955. For example, in a manual setting, a translator will routinely consider
different ways of translating a particular word and select what he or she
understands to be the best way to do so. See id. at 954—55. Furthermore,
claim 17 ’s use of a processor to learn the prediction model is nothing more
than a recitation of a generic computer, which cannot transform a patent-
ineligible abstract idea into a patent-eligible invention. See Alice, 134 S.Ct.
at 2358. “Stating an abstract idea while adding the words ‘apply it’ is not
enough for patent eligibility.” Id., citing Mayo, 132 S.Ct. at 1294
(quotations omitted). In fact, like the processes claimed in Gottschalk v.
Benson, 409 U.S. 63 (1972), the method of claim 17 “can [] be performed
without a computer” or, alternatively, “can be carried out in existing
computers long in use, no new machinery being necessary.” Id. at 67. In
view of the foregoing, we understand claim 17 to merely implement an old
practice in another known environment. Cf. FairWarning IP, LLC v. Iatric
Systems, Inc., 839 F.3d 1089, 1094. “In this context, the concern about
preempting public use of certain kinds of knowledge, emphasized in Mayo,
is a grave one.” SmartGene, 555 Fed. Appx at 955, citing Mayo, 132 S.Ct.
at 1301-02.
Accordingly, we conclude claim 17 is directed to a patent-
ineligible abstract idea and recites no element or combination of
elements that amounts to significantly more than the abstract idea.
Therefore, we sustain the rejection of claim 17. Regarding dependent
claims 18—21 (which stand or fall with claim 17), for the same reasons
discussed regarding claim 17, we sustain the rejection. See App. Br.
13; Reply Br. 17.
See App. Br. 13; Reply Br. 17. Because our analysis deviates
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from the reasoning in the Examiner’s Final Rejection and Answer (see
Final Act. 2; Ans. 2—7), however, we designate our affirmance as a
new ground of rejection within 37 C.F.R. § 41.50(b).
DECISION
The decision of the Examiner to reject claims 1—12 and 14—21 under
35U.S.C. § 101 is affirmed.
Because in some instances the claim interpretation and reasoning we
rely on to sustain the rejections of claims 1—12 and 14—21 differs from those
of the Examiner, we designate our affirmances of the rejections of these
claims as new grounds of rejection so as to provide Appellants with a full
and fair opportunity to respond to the thrust of the rejections. This decision
should not be construed to imply that, in all instances in which the Board
affirms a rejection based on a claim interpretation or reasoning that differs
from that of the Examiner, the thrust of the rejection has changed so as to
warrant designation of the affirmance as a new ground of rejection. Rather,
in this particular case, in light of the scope of the arguments presented by
Appellants, the Board deemed it, in the interests of fairness to Appellants,
appropriate to designate the affirmance as a new ground of rejection.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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)(l)(iv), 41.50(f), 41.52(b).
AFFIRMED
37 C.F.R, $ 41.50(b)
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