The National Inventor Hall of Fame and Alice

The National Inventor Hall of Fame inducts a class of inventors every year to honor their breakthrough inventions.  The inductees typically have far reaching inventions that have profound impacts on the world.  The Hall of Fame was partially founded by the United States Patent and Trademark Office, and is now located in one of the USPTO buildings in Alexandria.  Every time I have a hearing at the PTAB in Alexandria, it is my ritual to walk through the museum and read about some of the amazing inventors of our time. 

On one of my more recent visits, I was reading about one of the inventions honored at the museum and was struck by some of the issued claims, particularly in light of the Supreme Court’s Alice decision. 

Consider Raymond Kurzweil’s optical character recognition algorithm described in US. 6,199,042.  Mr. Kurzweil was not only inducted into the Hall of Fame in 2012, he also won the Lemelson-MIT prize.  The invention enabled the translation of written words into audible speech.  Some say that Kurzweil’s invention was the most significant advancement for the blind and visually impaired since Braille was developed 150 years earlier.  But, would this invention pass muster under the USPTO’s current Alice regime?  Undoubtedly those whose lives were changed by Kurzweil’s brilliant invention would be shocked to learn the USPTO would likely consider the invention too abstract for patenting.  I think there is a strong chance the USPTO examiners would reject the invention under Alice.  To see how, we can consider the only independent claim in the patent:

     1. A computer program residing on a computer readable medium comprising instructions for causing a computer to:

     record the voice of an operator of the reading machine as a plurality of voice samples in synchronization with a highlighting indicia applied to a displayed document; and

     store the plurality of voice samples in a data structure in a manner that associates the plurality of voice samples with displayed positions of words in the document.

Applying the USPTO’s standard cookie cutter analysis, an Examiner could easily argue that in the instant case, the claims are directed to a computer program for recording voices and storing the voice samples.  A computer program for performing voice recordings in synchronism with indicia is an idea of itself, particularly as it merely relies on data structures, and therefore the claims include an abstract idea.   The claims do not include limitations that are “significantly more” that the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.  Note that the limitations of the claims, such as the computer readable medium, the recording of an operator’s voice, and the storage of voice samples in a data structure are mere instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry.  The language related to the manner in which the data are associated with one another is merely functional language. 

Good thing Kurzweil received his awards before Alice.  I suspect there are many more inductees who would have a hard time if their applications were being examined by today’s Examiners in view of Alice.