NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: GEORGE MIZHEN WANG,
Appellant
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2017-1827
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/219,680.
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Decided: June 20, 2018
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GEORGE MIZHEN WANG, Fremont, CA, pro se.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by MAI-TRANG
DUC DANG, BENJAMIN T. HICKMAN, THOMAS W. KRAUSE.
______________________
Before REYNA, SCHALL, and STOLL, Circuit Judges.
PER CURIAM.
George Mizhen Wang appeals the final decision of the
Patent Trial and Appeal Board (“Board”) that affirmed
the Examiner’s final rejection of claims 1–17, 19, 21, and
22 of U.S. Patent Application No. 13/219,680 (“the ’680
application”). Ex Parte Wang, No. 2016-000264,
2017 WL
2 IN RE: WANG
383025, at *1 (Jan. 23, 2017) (“Board Decision”). Relevant
to this appeal, the Examiner rejected claims 1–17, 19, 21,
and 22 (“the application claims on appeal”) after finding
(1) that all of the claims were directed to non-statutory
subject matter under
35 U.S.C. § 101; (2) that all of the
claims were indefinite; (3) that independent claims 1, 2,
and 19 and dependent claims 3–5 and 14 were anticipated
by
U.S. Patent No. 7,004,758 B2 to Kuojui Su (“Su”),
Appx.154; and (4) that dependent claims 6–13, 15–17, 21,
and 22 were obvious over Su in view of the Scholastic
First Dictionary, Appx. 160. See Appx. 86.
We have jurisdiction pursuant to
35 U.S.C. § 141 and
28 U.S.C § 1295(a)(4)(A). Because, as explained below, we
agree with the Board that the application claims on
appeal are directed to non-statutory subject matter, we
affirm the Board’s decision. We do not reach the remain-
ing issues decided by the Board.
DISCUSSION
I.
The invention claimed in the ’680 application relates
to “[a] phonetic symbol system formed by phonetic sym-
bols using letters of [the] English alphabet.” ’680 applica-
tion, Abstract, Appx. 18. The specification distinguishes
the claimed invention from existing phonetic symbol
systems that use diacritic marks and symbols that are not
letters. Id., Appx. 19. Embodiments described in the ’680
application map letters to sounds. Id., Appx. 21–30. For
example, “a” represents the “a” sound in “about,” while “e”
represents the “e” sound in “bed” and “aa” the “a” sound in
“father.” Id., Appx. 21. Claim 1 is illustrative of the
claimed invention. It reads as follows:
A phonetic symbol system comprising:
a plurality of phonetic symbols, wherein
each of said phonetic symbols is defined by
one or more than one letter of English al-
IN RE: WANG 3
phabet, the case or the style of said letter
does not affect the sounds of said phonetic
symbols, there are vowel phonetic symbols
and consonant phonetic symbols of said
phonetic symbols, each vowel is distinc-
tively represented by one of said vowel
phonetic symbols, and each consonant is
distinctively represented by one of said
consonant phonetic symbols.
Appx. 11.
II.
Section 101 provides, in relevant part, that “[w]hoever
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 there-
for.” The Examiner rejected the application claims on
appeal after determining that the phonetic symbols that
are the subject of the ’680 application “do not have any
independent physical existence as distinct entities of an
apparatus/system and therefore, when considered inde-
pendently, are not considered to fall within one of the four
statutory categories of invention.” Appx. 90. In affirming
the final rejection, the Board agreed with the Examiner
that “defining phonetic symbols in language, using strings
of English letters,” is an unpatentable abstract idea.
Board Decision at *2–3.
III.
Whether an invention recites patent-eligible subject
matter under section 101 is a pure question of law that we
review de novo. Genetic Techs. Ltd. v. Merial LLC.,
818
F.3d 1369, 1373 (Fed. Cir. 2016). Applying that standard
here, we discern no error in the Board’s decision.
Addressing section 101’s patentability requirements,
we have stated that “[f]or all categories except process
claims, the eligible subject matter must exist in some
4 IN RE: WANG
physical or tangible form.” Digitech Image Techs., LLC v.
Elecs. For Imaging, Inc.,
758 F.3d 1344, 1348 (Fed. Cir.
2014). That means that to qualify as a machine under
section 101, the claimed invention must be a “concrete
thing, consisting of parts, or of certain devices and combi-
nation of devices.” Id. at 1349 (quoting Burr v. Duryee,
68
U.S. 531, 570 (1863)). At the same time, “[t]o qualify as a
manufacture, the invention must be a tangible article that
is given a new form, quality, property, or combination
through man-made or artificial means.”
Id. (citing Dia-
mond v. Chakrabarty,
447 U.S. 303, 308 (1980)). Lastly,
“a composition of matter requires the combination of two
or more substances and includes all composite articles.”
Id. Because the phonetic symbol system that is the
subject of Mr. Wang’s claimed invention is not a “concrete
thing,” a “tangible article,” or “a combination of two or
more substances,” it plainly does not meet the “physical or
tangible form” requirement of section 101.
Neither does the claimed invention qualify as a pro-
cess under section 101. A process is any “process, art or
method” that “includes a new use of a known process,
machine, composition of matter, or material.”
35 U.S.C.
§ 100(b). A process can be “an act, or a series of acts,
performed upon the subject-matter to be transformed and
reduced to a different state or thing.” Gottschalk v. Ben-
son,
409 U.S. 63, 70 (1972) (quoting Cochrane v. Deener,
94 U.S. 780, 787–88 (1876)). A process “consists of a
series of acts or steps” and is something that “has to be
carried out or performed.” In re Nuijten,
500 F.3d 1346,
1355 (Fed. Cir. 2007) (quoting In re Kollar,
286 F.3d 1326,
1332 (Fed. Cir. 2002)). As seen, Mr. Wang claims “[a]
phonetic symbol system comprising a plurality of phonetic
symbols, wherein each of said phonetic symbols is defined
by one or more than one letter of English alphabet.”
Appx. 11. Significantly, none of the application claims on
appeal requires an act or step or anything that must be
performed. The only activity recited in the independent
IN RE: WANG 5
claims of the ’680 application are things “being defined,”
things “not affect[ing]” other things, and things “repre-
sent[ing]” other things. Appx. 11, 14–15. Mr. Wang’s
invention thus does not qualify as a patent-eligible pro-
cess under section 101.
Finally, where, as here, claims of a patent application
recite an abstract idea, the question becomes whether
they contain “additional features” that embody an “in-
ventive concept,” so as to nevertheless make them patent-
eligible. Alice Corp. Pty. Ltd v. CLS Bank Int’l,
134 S. Ct.
2347, 2357 (2014) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc.,
132 S. Ct. 1289, 1294, 1297
(2012)). The application claims on appeal, however,
contain no “additional features” of any kind embodying an
inventive concept. The claims merely encompass strings
of English letters representing sounds. In short, there is
no inventive concept that rescues them from patent
ineligibility.
CONCLUSION
For the foregoing reasons the decision of the Board is
affirmed.
AFFIRMED
No costs.
