The USPTO has identified three recent PTAB decisions as “INFORMATIVE.” All three will be helpful to patent prosecutors and so should be considered:
- Obviousness: Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-00582, Paper 34 (Aug. 5, 2019) (designated informative on Dec. 11, 2019) (finding insufficient justification to combine references);
- Obviousness: Johns Manville Corp. v. Knauf Insulation, Inc., Case IPR2018-00827, Paper 9 (Oct. 16, 2018) (designated informative on Dec. 11, 2019) (denying institution based upon insufficient justification to combine references); and
- Eligibility: Ex parte Linden, 2018-003323 (Apr. 1, 2019) (designated informative on Dec. 11, 2019) (reversing examiner rejection based upon 2019 Examination Guidelines for eligibility).
This post will focus on Linden, which is a patent application owned by BAIDU spun out of Prof. Andrew Ng’s lab at Stanford.
In Linden, the BAIDU patent application claims a method using a trained neural network to transcribing speech. The claimed method involves several data processing steps: normalizing the input (to the training data); generating a “jitter set” of audio files (time-distorted versions of the original); generating a spectrogram for each time-jiggered audio file; predicting character probabilities with the neural network; and transcribing the audio based upon character probabilities and a language model.
The examiner rejected the claims as directed to an abstract idea of manipulating data; creating information sets (based upon prior information sets); and decoding data. On appeal, the PTAB reversed — finding that the claim should not be classified as directed to an abstract idea under the 2019 Examination Guidelines. Under the Guidelines, abstract ideas must be classified as either:
- Mathematical concepts;
- Certain methods of organizing human activities; or
- Mental processes.
* The guidelines note claims outside the enumerated groupings can be treated as abstract ideas, but only in “rare circumstance.” *
Here, the Board found that the transcription claims are not directed at these categories. Focusing first on mental processes and human activities, although transcription is a human/mental activity, the Board found that the specific process here (jiggering/spectrogram sets/etc.) cannot be “practically performed mentally” nor do they recite “organizing human activity” — which is defined as activities such as using fundamental economic principles, commercial and legal interactions, and managing relationships.
Regarding mathematical concepts. The claims here require several mathematical operations to be performed: jiggering; creating spectrogram; predicting character probabilities; etc. However, the Board found that none of these operations actually “recite” a mathematical algorithm or formula.
[T]he Examiner identifies that the Specification discloses an algorithm to obtain the predicted character probabilities. The mathematical algorithm or formula, however, is not recited in the claims. As such, under the recent Memorandum, the claims do not recite a mathematical concept.
Linden. In case you didn’t see it – this is bonkers. The Board here is saying that the claim would be problematic only if it actually and expressly recited the algorithm that it uses. Since the claim is drafted more broadly (i.e., at a higher level of abstraction), it cannot be seen as abstract.
The PTAB went on to explain that even if the claims did recite a mathematical concept — they are still not problematic because the claims as a whole are not “directed to an abstract idea” but rather any abstractions are “integrated into a practical application.”
Regarding Alice Step 2, the Board also faulted the examiner for failing to provide evidence that the claims do not include an inventive concept:
[T]he examiner concludes the claims do not include “any additional elements that amounts to significantly more than a judicial exception” but fails to provide sufficient factual support. Berkheimer.
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Typo by the PTO?. The Board identifies the case as “Ex PARTE LEE LINDEN, BENJAMIN LEWIS, AND ABHEEK ANAND.” This is confusing to me because none of these individuals are listed as inventors on the patent (Awni Hannum is the first named inventor).