It has been over five and a half years since the notorious Alice Corp. v. CLS Bank International 573 U.S. 208 was handed down by the U.S. Supreme Court. Since then, the USPTO has been publishing patent subject matter guidance documentation in the Federal Register to assist patent applicants and examiners when deciding on whether patent claims are directed to eligible subject matter. Part of this process has been labelling a series of decisions by the Patent Trial and Appeal Board (PTAB) as informative. One assumes that the goal is to develop a series of informative decisions to ameliorate the uncertainty surrounding subject matter eligibility in the U.S.
The latest such decision is Ex parte Hannun, 2018-003323 (Apr. 1, 2019). The patent application in question is directed to improving speech transcription. Claim 11 is illustrative of the invention and reads as follows:
A computer-implemented method for transcribing speech comprising:
receiving an input audio from a user;
normalizing the input audio to make a total power of the input audio consistent with a set of training samples used to train a trained neural network model;
generating a jitter set of audio files from the normalized input audio by translating the normalized input audio by one or more time values;
for each audio file from the jitter set of audio files, which includes the normalized input audio:
generating a set of spectrogram frames for each audio file;
inputting the audio file along with a context of spectrogram frames into a trained neural network;
obtaining predicted character probabilities outputs from the trained neural network; and
decoding a transcription of the input audio using the predicted character probabilities outputs from the trained neural network constrained by a language model that interprets a string of characters from the predicted character probabilities outputs as a word or words.
The decision leads the reader through the steps taken to apply the Alice decision to the claim in question. 35 U.S.C. § 101 sets out that an invention is patent eligible if it claims a “new and useful process, machine, manufacture or composition of matter.” The Supreme Court, for example in Alice, has interpreted 35 U.S.C. § 101 to exclude “laws of nature, natural phenomena and abstract ideas” from the patent eligible subject matter set.
In Mayo v. Prometheus, 566 U.S. 66 (2012), (cited by the Supreme Court in Alice) a two-step framework was set out. In the first step, the claim is interrogated to determine the concept to which the claim is directed. If the concept is patent eligible, then well and good. However, if the concept is an abstract idea, such as a method of organising a human activity, or a mathematical formula, then the second step of the enquiry is enlivened. In the second step, the claim is examined to determine whether is contains an inventive concept sufficient to transform the claimed abstract idea into patent eligible subject matter. It is not enough that the abstract concept merely requires generic computer implementation.
In an earlier revised guidance (Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)) the query proceeds as follows:
Look to whether the claim recites:
- any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organising human activity such as a fundamental economic practice, or mental processes; and
- additional elements that integrate the judicial exception into a practical application (MPEP § 2106.05(a)-(c), (e)-(h) (9th Ed., Rev. 08.2017, Jan. 2018)).
Only if the claim recites a judicial exception and does not integrate the judicial exception into a practical application look to whether the claim:
- adds a specific limitation beyond the judicial exception that is “not well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
- simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
The Examiner contended:
- Under step one of the Alice test, the claims are directed to an abstract idea. For example, the Patent Specification showed that the predicted character probabilities is an algorithm and, as such, the claimed invention is directed to a mathematical formula.
- Manipulating data, generating information based on a prior information set and decoding audio data using equations or mathematical formulae are all plainly in the abstract idea category of judicial excepted subject matter and the abstract ideas are categorised under “Certain Methods of Organising Human Activity” since humans can listen to an audio file and transcribe the audio data into text data which can all be done mentally.
- Under step two, the claims do not amount to significantly more than the abstract idea, since it is just decoding the transcription using a mathematical formula or relationship, thus converting or translating audio data into another form of data.
The Appellant contended:
- The Examiner overgeneralised and oversimplified the claimed invention. For example, the Examiner tried to eliminate the trained neural network and related elements by equating it to a generic computer. A generic computer is not a trained neural network that has been specially designed and trained.
- The claimed invention is a specific implementation to address specific technological problems in automatic speech recognition and is directed to a “specific improvement in computer capabilities”.
- With respect to step two of the Alice test, the claims include significantly more than the abstract idea. The claims “are not generic processes such as merely storing and retrieving data”, but rather “the claims include specific implementation steps” including normalising, generating a jitter set, generating a set of spectrogram frames, obtaining character probabilities, and decoding using the predicted character probabilities.
- The claims deal with improvements to a technology or technical field and improvements to the functioning of the computer itself.
- The claims add specific limitations other than what is well-understood, routine and conventional in the field.
The PTAB disagreed with the Examiner that the claims recite either a method of organising human activity or a mental process. While transcription generally can be performed by a human, the claims here are directed to a specific implementation including the steps of normalising an input file, generating a jitter set of audio files, generating a set of spectrogram frames, obtaining predicted character probabilities from a trained neural network and decoding a transcription of the input audio using the predicted character probability outputs. These are not steps that can practically be performed mentally. Nor did the PTAB see how the claimed invention could recite organising human activity. For example, the claims do not include fundamental economic principles or practices, commercial or legal interactions, managing personal behaviour or relationships or interacting between people.
According to the PTAB, even if the claims were considered to recite a mathematical concept, the claims are not directed to an abstract idea because the alleged judicial exception is integrated into a practical application. Also according to the PTAB, the Examiner failed to sufficiently support the finding that the claims do not add significantly more to the alleged judicial exception. Namely, the Examiner concluded that the claims do not include any additional elements that amount to significantly more than a judicial exception but failed to provide sufficient factual support. Such a conclusion cannot stand without sufficient factual support (Berkheimer v. HP Inc (Fed. Cir. 2018))