DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments received 04/01/2026 with respect to the rejection under 35 USC 101 have been considered but are moot in view of the new ground(s) of rejection. Detailed response is given in sections 3-4 as set forth below in this Office action.
Applicant argues (REMARKS, p.11):
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Examiner respectfully disagrees. Applicant is advised that, according to MPEP 2106 and the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), the Office determines claim eligibility under 35 U.S.C. § 101 using the Alice framework. The analysis under Step 2A - Prong 1 evaluates whether the claim recites a judicial exception. Step 2A - Prong 2 asks if the claim recites additional elements that integrate the judicial exception into a practical application, and, if necessary, Step 2B further analyzes whether or not the claim provides an Inventive Concept. That is, the claim needs to be analyzed limitation by limitation, and/or element by element, following the MPEP/2019 PEG guidelines.
In the instant case, focusing on what the inventors have invented exactly and giving the broadest reasonable interpretation (BRI) to the claims, Examiner asserts that the pending claims 1-20 are directed to an abstract idea of generating music based on a lyric inputter by a user, but without reciting any additional element that amounts to “significantly more” or reflects an “inventive concept”.
Specifically, under Step 2A - Prong 1, Examiner identified that the “heart”, e.g. “the bolded portion” (see section 4 below for details) of representative claim 1, recites a judicial exception (mental process) because each or the combination of the claim limitations S2, S3, S4, S5, S6, S7 and S8 recited in the bolded portion encompasses mental processes, i.e. data manipulation, evaluation and judgment, that can be performed in the human mind or by a human using a pen and paper.
Under Step 2A - Prong 2, Examiner analyzed each of the remaining limitations, i.e. “additional elements”, individually and in combination, and determined that the claim as a whole, including “the additional elements”, fails to integrate the judicial exception into a practical application. The additional limitations, e.g., “a processor and a memory operatively coupled to the processor and storing …”, “a music generation program stored in the memory and executed by the processor” and “… implemented by the processor”, are all recited at a high level of generality. They encompass generic computer components performing computing activities via basic function of the computer. The associated data and information are considered merely necessary for performing the abstract idea and/or generally to link the judicial exception to a particular technological environment or field of use. It has been held that broadly/generally mentioning of the generic computer components performing computing activities via basic function of a computer does not amount to “significantly more”. As to the limitations of “receive a user input of lyrics” and “output the music file encoding the melody and the lyrics”, they are merely insignificant extra-solution activities that do not impose any meaningful limits on practicing the abstract idea. MPEP § 2106.05(g) concerns “Insignificant Extra-Solution Activity.” It describes, as an example, a mathematical calculation of an alarm limit and extra-solution activity of accordantly adjusting the alarm limit. This example is taken from Flook, which claimed method consists of a mathematical calculation of an alarm limit as a function of temperature, indescriptly monitoring the temperature, and accordingly adjusting the alarm limit. Flook, 437 U.S. at 585-86, 596-97. Similar to Flook’s claim, the step of data acquisition and the step of outputting the results from the abstract idea of instant claim 1 are broad in scope. They do not provide any detail/evidence to how/why the claimed elements amount to significantly more than the judicial exception. As such, these additional elements are treated as mere instructions to apply the judicial exception but not be qualified for an improvement in the functioning of such as a computer or an improvement to another technology or technical field. See MPEP 2106.04(d), 2106.05(a), and 2106.05 (f).
Put it differently, the claim does not recite any additional limitation/element that transforms the claim from one claiming only a result to one claiming a way of achieving it. As such, Examiner affirmed that none of the additional limitations in claim 1 is qualified to be “significantly more”, such that it improves the functioning of a computer or the relevant technology by using the judicial exception in conjunction with a particular machine or manufacture that is integral to the claim. That is, the claim as a whole does not transform or reduce a particular article to a different state or thing, nor does it apply the judicial exception in some other meaningful way beyond generally linking it to a particular technological environment.
Under Step 2B, Examiner evaluated the additional elements again to determine whether they amount to an inventive concept. With the BRI to the claim, Examiner conclude that all the additional limitations/elements recited in instant claim 1, either individually or in combination, are well-understood, routine, conventional in the art (see discussion of the prior art cited in the previous Office Action). They do not provide any inventive concept or reflect a qualified improvement (see MPEP 2106.05).
It is held that simply setting forth advantages (i.e. benefits) of use without providing any rational/evidence to how/why the claimed elements amount to significantly more than the judicial exception could be treated as mere instructions to apply the judicial exception on a computer component (MPEP 2106.05(f)), but not qualified for an improvement (i.e. enhancement) in the functioning of a computer or an improvement to another technology or technical field. The key is to show that the claim goes beyond just performing a data manipulation or calculation and provides a practical application or significant improvement through the use of that data manipulation/calculation. See MPEP 2106.04(d)(I) and 2106.05(a).
The rest of the Applicant’s arguments regarding the claim eligibility are reliant upon the issues discussed above or have been fully addressed by the analyses as set forth below in this Office Action.
Applicant's arguments regarding the rejection under 35 USC 102 in reference to the amended claims are deemed persuasive. The corresponding rejection is therefore withdrawn.
Claim Rejections - 35 USC § 101
3. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 101 that form the basis for the rejections under this section made in this Office action:
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Under the 2019 PEG (now been incorporated into MPEP 2106), the revised procedure for determining whether a claim is "directed to" a judicial exception requires a two-prong inquiry into whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
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, conventional" in the field (see MPEP § 2106.0S(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Claims 1-20 are directed to an abstract idea of generating music based on a lyric inputter by a user.
Specifically, representative claim 1 recites:
A music generation system comprising:
a processor and a memory operatively coupled to the processor and storing a rhythm template database comprising a plurality of rhythm templates; and
a music generation program stored in the memory and executed by the processor to be configured to:
(S1) receive a user input of lyrics;
(S2) identify a plurality of syllables in the lyrics;
(S3) determine a syllable pattern in the identified plurality of syllables;
(S4) for each of the plurality of rhythm templates, execute a rating algorithm implemented by the processor to determine a degree of matching between the syllable pattern and the rhythm template based on at least a syllable-count compatibility metric;
(S5) select, from the plurality of rhythm templates, a rhythm template having a highest degree of matching;
(S6) match the syllable pattern to the selected rhythm template of the plurality of rhythm templates;
(S7) generate a melody based on the selected rhythm template;
(S8) generate a music file encoding the melody and the lyrics; and
(S9) output the music file encoding the melody and the lyrics.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
The highlighted portion of the claim constitutes an abstract idea under the 2019 Revised Patent Subject Matter Eligibility Guidance and the additional elements are NOT sufficient to amount to significantly more than the judicial exceptions, as analyzed below:
Step
Analysis
1. Statutory Category ?
Yes.
System/Apparatus
2A - Prong 1: Judicial Exception Recited?
Yes.
See the bolded portion as listed above.
Under its broadest reasonable interpretation (BRI), each and/or the combination of the limitations S2, S3, S4, S5, S6, S7 and S8 recited in the bolded portion encompasses mental processes, i.e. data manipulation, evaluation and judgment, that can be performed in the human mind or by a human using a pen and paper.
The recitation of “... implemented by the processor” does not negate the mental nature of these limitations because the claim here merely uses the processor as a tool to perform the otherwise mental process. According to the MPEP 2106.04(a)(2), if a claim limitation, under its broadest reasonable interpretation, covers mental processes except for the mention of generic computer components performing computing activities via basic function of the computer, then the claim is likely considered to be directed to an ineligible abstract idea, as it essentially describes a mental process that could be performed by a human without the computer components adding any significant practical application beyond the abstract concept itself.
Nothing in the bolded portion precludes these limitations from practically being performed in the mind and/or with the aid of pen/paper. Note, the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). See also to MPEP 2106.04(a)(2).III
Therefore, the bolded portion of instant claim 1 amounts to an abstract idea falling within the “Mental Process” grouping of Abstract Ideas defined by the 2019 PEG.
2A - Prong 2: Integrated into a Practical Application?
No.
The additional elements of “a processor and a memory operatively coupled to the processor and storing a rhythm template database comprising a plurality of rhythm templates; and a music generation program stored in the memory and executed by the processor” are all recited at a high level of generality. Under the BRI, the combination of the processor and the memory reads on a general-purpose computer performing a generic computer function of processing data. The generic processor limitation is no more than mere instructions to apply the abstract idea using the general-purpose computer. It is held that performing an abstract idea using a general-purpose computer system would not amount to significantly more than the abstract algorithm itself. See, for example, Whitserve LLC v. Dropbox, Inc. and MPEP 2106.05(f).
Under its BRI, limitation S1 encompasses a process of gathering the data/information necessary for performing the abstract idea. The claim does not require any particular devices or sensors to receive the information. Thus, the limitation S1 does not impose any other meaningful limits on the claim. See MPEP 2106.05(g)(3): … that were described as mere data gathering in conjunction with a law of nature or abstract idea. See also Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 13863, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering).
Under its BRI, the limitation S7 reads on an insignificant post solution activity, i.e., displaying/outputting the results from the abstract idea. Attaching a post-solution activity to a judicial exception is not qualified for meaningful limitations to integrate the identified judicial exception into a practical application.
The claim as a whole does not meet any of the following criteria to integrate the abstract idea into a practical application:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Various considerations are used to determine whether the additional elements are sufficient to integrate the abstract idea into a practical application. However, in all of these respects, the claim fails to recite additional elements which might possibly integrate the claim into a particular practical application. At most, it only generally links the judicial exception to a particular technological environment or field of use. See MPEP 2106.04(d)(2).
2B: Claim provides an Inventive Concept?
No.
Focusing on what the inventors have invented exactly, it is deemed that the “heart” of the representative claim 1 is directed to an abstract algorithm of generating music based on a lyric inputter by a user. Under the 2019 PEG, the claimed algorithm falls within the “Mental Process” grouping of abstract ideas. As discussed with respect to Step 2A Prong Two above, none of the additional elements recited in claim 1 is considered to be qualified for a significant or meaningful limitation because they do not impose any meaningful limits on practicing the abstract idea. The recited additional limitations amount to no more than mere instructions to apply the judicial exception using generic computer components and/or well-known/conventional techniques. No additional limitation can be treated as “significantly more” or an “inventive concept”. See MPEP 2106.05.
The claim is therefore ineligible under 35 USC 101.
The dependent claims 2-10 inherit attributes of the independent claim 1, but does not add anything which would render the claimed invention a patent eligible application of the abstract idea. The claim merely extends (or narrows) the abstract idea which does not amount for "significant more" because it merely adds details to the algorithm which forms the abstract idea as discussed above.
In particular, the limitation “wherein the outputted music file is a melody score with lyrics, a MIDI file with chord progressions, or an audio file” recited in claim 2 is considered insignificant post-solution activities including data characterization which generally link the use of the judicial exception to the relevant technological environment or field of use.
Claims 11-20 are rejected under 35 U.S.C. § 101 for the same reason as for claims 1-10 set forth above.
Conclusion
5. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Contact Information
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANCHUN QIN whose telephone number is (571)272-5981. The examiner can normally be reached 9AM-5:30PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dedei Hammond can be reached at (571)270-7938. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANCHUN QIN/Primary Examiner, Art Unit 2837
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