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The PTAB Designates Ex Parte Hannun as an Informative Decision On Patent Eligibility

On December 11, 2019, the Patent Trial and Appeal Board (“PTAB”) designated Ex parte Hannun, 2018-003323 (Apr. 1, 2019) as an informative PTAB decision for applying the United States Patent and Trademark Office’s (“USPTO”) 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”) to determine patent eligibility under 35 U.S.C. § 101.

As laid out in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014), the first step of the two-step test for determining patent eligibility under 35 U.S.C. § 101 is to determine whether claims are directed to a judicial exception, such as an abstract idea. Regarding the “abstract idea” judicial exception, the 2019 PEG identifies the following three concepts as abstract ideas – (1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes.

In Ex parte Hannun, the Examiner determined that the claims of the U.S. patent application at issue were directed to an abstract idea categorized under “mathematical concepts” and/or “certain methods of organizing human activity,” and thus the claims were not patent-eligible under 35 U.S.C. § 101.

Regarding the Examiner’s identification of “mathematical concepts” in the claims, the Examiner noted that the claims were directed to a mathematical formula because the claims recited using predicted character probabilities to decide a transcription of an input audio and the specification of the application at issue disclosed an algorithm for obtaining the predicted character probabilities. The PTAB disagreed and concluded that the claims were not directed to a mathematical formula because the claims do not affirmatively recite any mathematical formula.

Regarding the Examiner’s identification of “certain methods of organizing human activity” in the claims, the Examiner noted that the claims recited three steps, namely (1) normalizing the input audio data, (2) generating spectrogram frames based on each audio file, and (3) using a mathematical formula to convert audio data into text data. The Examiner determined that since humans can listen to an audio file and transcribe the audio data into text data which can all be done mentally, the claims were directed to a method of organizing human activity. The PTAB disagreed and concluded that the claims do not recite organizing human activity, such as fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, or relationships or interactions between people. The PTAB also concluded that the claims do not recite any mental process because the claimed steps cannot be performed mentally.

Hannun provides a guidance as to how the abstract idea categorization disclosed in the 2019 PEG can be applied during examination. With respect to the “mathematical concepts” category, Hannun suggests that claims are not directed to a mathematical concept unless the claims affirmatively recite a mathematical algorithm or formula. With respect to the “mental processes” category, Hannun suggests that the steps recited in claims must be capable of being performed mentally.