Ex Parte Arroyo et al

Patent Trials and Appeals Board

Jun 21, 2019

14449738 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/449,738 08/01/2014
75949 7590
IBM CORPORATION
C/0: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
06/25/2019
FIRST NAMED INVENTOR
Jorge A. Arroyo
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
RS\V920140081US1 5914
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
06/25/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORGE A. ARROYO, STEPHEN P. KRUGER,
PATRICK J. O'SULLIVAN, and LUCIANO SILVA
Appeal 2018-001869
Application 14/449,738
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 8-27, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed July 7, 2017), Reply Brief ("Reply Br.," filed Dec. 12,
2017), and Specification ("Spec.," filed Aug. 1, 2014), and to the
Examiner's Answer ("Ans.," mailed Oct. 17, 2017) and Final Office Action
("Final Act.," mailed Mar. 20, 2017).
2 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Br. 2.
Appeal 2018-001869
Application 14/449,738
STATEMENT OF THE CASE
The Appellants' "invention relates to notifying a user of an instant
messaging (IM) service about modifications, and more specifically,
notifying a user of an IM service about modifications made to an
opportunity." Spec. ,-J 1.
Claims 8 and 14 are the independent claims on appeal. Claim 8
(Appeal Br. 27 (Claims App.)) is illustrative of the subject matter on appeal
and is reproduced below (with added bracketing for reference):
8. A system for notifying a user of an instant message
(IM) service about a modification to an opportunity, the system
compnsmg:
[ (a)] a receiving engine to receive at least one modification
made to an opportunity stored in a customer relationship
management (CRM) system, the opportunity representing a
record structure in the CRM system, in which each of the
opportunities captures a number of fields of metadata;
[ (b)] an identifying engine to identify a first user
associated with the modification made to the opportunity stored
in the CRM system;
[ ( c)] a list determining engine to determine a list of users
associated with the opportunity;
[ ( d)] a second user determining engine to determine, from
the list of users associated with the opportunity, a second user
associated with the first user through an instant messaging (IM)
service; and
[ ( e)] a sending engine to send an alert to the second user
of the IM service, the alert indicating to the second user the
modification made to the opportunity by the first user.
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REJECTIONS
Claims 8-27 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more.
Claims 8, 12-15, 19, 20, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Knight et al. (US 2014/0164055 Al,
pub. June 12, 2014) ("Knight") and Mondri et al. (US 2014/0380190 Al,
pub. Dec. 25, 2014) ("Mondri").
Claims 9-11 and 16-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Knight, Mondri, and Clay et al. (US 2003/0225591
Al, pub. Dec. 4, 2003) ("Clay").
Claims 21 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knight, Mondri, and Palmert et al. (US 2014/0207801 A 1,
pub. July 24, 2014) ("Palmert").
Claims 23-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knight, Mondri, and Sabharwal et al. (US 2012/0323639
Al, pub. Dec. 20, 2012) ("Sabharwal").
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knight, Mondri, and Beechuk et al. (US 2014/0282101
Al, pub. Sept. 18, 2014) ("Beechuk").
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ANALYSIS
35 U.S.C. § 1 OJ - Patent-Eligible Sub;ect Matter3
The Appellants argue claims 8-27 as a group. See Appeal Br. 15-16.
We select claim 8 from the group with claims 9-27 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice,
573 U.S. at 219 ("On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mi ti gate
settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
3 We address the rejections in the order presented by the Examiner in the
Final Action.
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
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patent-eligible application." Alice, 573 U.S. at 221 ( citation omitted).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). Under the 2019
Revised Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a)-(c), (e)-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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 § 2106.05(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.
See 2019 Revised Guidance.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework the Examiner
determines that claim 8 is directed to "sending notifications of changes made
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to an opportunity within a customer relationship management system which
is an abstract idea" of"' an idea itself comprising activities such as data
recognition and storage or a 'method or organizing human activities'
comprising advertising and marketing." Final Act. 3. When viewed through
the lens of the 2019 Revised Guidance, the Examiner's determination
depicts the claimed subject matter as one of the ineligible "[ c Jertain methods
of organizing human activity" that include "commercial ... interactions
(including ... advertising, marketing or sales activities or behaviors)" under
Prong One of Revised Step 2A. 2019 Revised Guidance, 84 Fed. Reg. at 52.
The Appellants contend that claim 8 recites "creat[ing] a new
interface between a customer relationship management ( CRM) system and
an instant messaging (IM) service." Appeal Br. 16; see also Reply Br. 12.
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016), cert.
denied, 137 S.Ct. 1230 (2017)).
The "directed to" inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
.... Rather, the "directed to" inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether "their character as a whole is directed to excluded
subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework "asks whether the focus of
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the claims is on the specific asserted improvement in [ the relevant
technology] or, instead, on a process that qualifies as an 'abstract idea' for
which computers are invoked merely as a tool." Id. at 1335-36; see also
2019 Guidance, 84 Fed. Reg. at 54-55.
An examination of the claim shows that independent claim 8 recites
"[a] system for notifying a user of an instant message (IM) service about a
modification to an opportunity, the system comprising:" (a) an engine to
receive at least one modification made to a data record of opportunity
metadata stored in a "CRM" system; (b) an engine "to identify a first user
associated with the modification made to the opportunity stored in the CRM
system;" ( c) an engine "to determine a list of users associated with the
opportunity;" (d) an engine to determine, from the list, :a second user
associated with the first user through an instant messaging (IM) service;"
and ( e) an to send an alert indicating to the second user of the IM service of
the modification made by the first user. Appeal Br. 27 (Claims App.). The
IM service, identified as item 225 (id. at 6), is described as including users
and allowing users to exchange messages (Spec. ,-J 50), but is not defined
technically or technology in the Specification. The engines are described as
items 216-1 through 216-5 of Figure 2 (Appeal Br. 6-7) that are
"combination[ s] of hardware and program instructions to perform a
designated function" and "may include a processor and memory" (Spec.
,-J 45). The CRM that stores the data is described as system 202 (Appeal
Br. 6) that "may be a classical CRM system that monitors sources such as
current customers and potentially future customers to gather information to
better target various customers" (Spec. ,-J 39) or "a social CRM system that
monitors sources such as social media sources" (id. ,-i 40).
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The Specification describes that the "invention relates to notifying a
user of an instant messaging (IM) service about modifications, and more
specifically, notifying a user of an IM service about modifications made to
an opportunity." Spec. ,-J 1. The Specification further describes a system
that "uses techniques and methods to gather, organize, automate, and
synchronize sales, for marketing, customer service, and technical support[,
and] ... stores this information in a database." Id. ,-i,-i 2, 24. The stored
"information is retrieved from the database and analyzed to allow a company
to better target various customers." Id. The Specification defines the term
"opportunities" as "a complex record structure in a CRM system, in which
each of the opportunities captures a number of fields of metadata. In one
example, the opportunities may include a business's sales and/or interaction
with current customers, future customers, or combinations thereof." Id.
,-J 27. The term "metadata" is defined "broadly as information that is
associated with an opportunity" (id. ,-i 28), and "modification" is defined
"broadly as a change in metadata that is associated with an opportunity" (id.
,-J 29).
The claim recites the results of the functions without providing
details. The claim limitations do not detail how, technologically or by what
algorithm, the engines identify a first user, determine a list of users, and
determine a second user, limitations (b ), ( c ), and ( d). The Specification
provides no further details. For example, the Appellants generally cite to
Figures 1 and 2 and paragraph 4 of the Specification as support for all of the
claimed steps. Appeal Br. 6-7. However, the Specification's paragraph 4
merely repeats the limitations of claim 8. Figures 1 and 2 depict generic
computers, a network, and blocks representing systems, metadata,
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opportunities, engines, the IM service, and users. There is no discussion of
how, technologically or by what algorithm, identifying and determining data
are performed.
Thus, the claim, under the broadest reasonable interpretation of the
claim limitations, recites a system for notifying a user about modifications
made to opportunity data. Our finding here is congruent with that made by
the Examiner that "the claims [] recite an abstract idea of a sending
notifications of changes made to an opportunity within a customer
relationship management system." Ans. 21. The limitation of receiving a
change to stored data is a pre-solution activity ordinarily performed in any
method involving analysis of data and notification of changes. The
limitations of identifying and determining data are mental steps and
activities that are ordinarily performed in evaluations, such as of changes to
data. Sending an alert based on the determination is a post-solution activity
and comprises providing information and results of evaluations.
Notifying a user about modifications made to an opportunity is similar
to the concepts of "collecting and analyzing information to detect misuse
and notifying a user when misuse is detected" and "monitoring audit log
data" in Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094, 1096
(Fed. Cir. 2016), of "selecting certain information, analyzing it using
mathematical techniques, and reporting or displaying the results of the
analysis" in SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed.
Cir. 2018), and of "customizing a user interface to have targeted advertising
based on user information" in Affinity Labs of Texas, LLC v. Amazon.com
Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016). Accordingly, we conclude the
claim recites a way of notifying a user of changes to opportunities, which is
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a way of managing interactions between people and a commercial
interaction of advertising, marketing, or sales activities, two of the certain
methods of organizing human activity as identified in the 2019 Revised
Guidance, 84 Fed. Reg. at 52, and thus an abstract idea. As such, we
disagree that the Examiner's determination is a "gross and improper
oversimplification of Appellant's [sic] claims." Appeal Br. 17 see also id.
at 18; Reply Br. 14-15.
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claims "apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception," i.e., "integrates the ... judicial
exception into a practical application." Here, the Appellants contend that the
claim is not abstract because it "creates a new interface" and "[t]his interface
between the CRM and IM systems has never existed before and improves
the functionality of the CRM system itself by making modifications to the
system's database more accessible and transparent to users of the system."
Appeal Br. 16; see also id. at 17; Reply Br. 12-13. When viewed through
the lens of the 2019 Revised Guidance, the Appellants contend that the
elements of the claim integrate the abstract idea into a practical application
by "reflect[ing] an improvement in the functioning of a computer." 84 Fed.
Reg. at 55. We disagree.
The claim does not recite any steps related technologically or
technically to creating an interface, but recites only the results of the
functions of receiving, identifying, determining, and sending data between
systems. The engines to perform the functions of receiving, identifying,
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determining, and sending data are conventional computers. See Spec.
,i 45, 21 ("program instructions may be provided to a processor of a general
purpose computer, special purpose computer, or other programmable data
processing apparatus"). Although the claim recites two "systems" of an IM
service and a CRM system, the claim does not recite any details on how,
technologically or by what algorithm, any interface or communication
between the IM service and CRM system is performed. The Appellants
recite the claim's limitations and state that they improve the functionality of
the system without any support or reasoning as to how they technologically
make data more accessible and transparent. And the claim does not recite
any such improvement, but broadly recites receiving, identifying,
determining, and sending data. See FairWarning, 839 F.3d at 1096-97.
We disagree with the Appellants' contention that the claim is similar
to those of McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016), because it "improve[s] the functioning of the CRM system
itself, as described above, and which provide functionality not previously
available." Appeal Br. 17; see also Reply Br. 13-14. The Appellants do not
point to anything in the claim that resembles the improvement to the
technical field of computer animation that was not simply the use of a
generic computer in McRO. The Specification, including the claim, does not
discuss or claim how any technical aspect of the computer or engine is
improved. The claim does not recite how any rules are used to improve an
existing technological process. Cf McRO, 837 F.3d at 1314.
To the extent the Appellants argue that the claim does not recite an
abstract idea because it "clearly do[ es] not prevent or monopolize all use of
'obtaining and comparing intangible data.' [sic] or any other identified
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abstract idea" (Appeal Br. 19; see also Reply Br. 15-16), we note that
although the Supreme Court has described "the concern that drives this
exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption," see Alice, 573 U.S. at 216,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ fJor this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) ( citing Alice, 573 U.S. at 216). Although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Id. The aforementioned concept is not
sufficiently limiting so as to fall clearly on the side of patent-eligibility.
We also find unpersuasive the Appellants' arguments that the claim is
akin to those of Enfish because it "similarly improves the functionality of
CRM database by notifying the second user to modifications made by the
first user." Appeal Br. 20; see also Reply Br. 16-18. In Enfish, the court
determined the claims were directed to a self-referential table for a computer
database and were directed to "a specific improvement to the way computers
operate." Enfish, 822 F.3d at 1336. Conversely, here, the claim is not
directed to an improvement in the way computers operate. At best, it
improves a way of providing notifications of data changes using the ordinary
capabilities of a conventional, general purpose computer. See Elec. Power,
830 F.3d at 1354. As discussed above, the Specification does not provide
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details on the technological manner in which the steps are performed,
including receiving, identifying, determining, and sending data.
We further disagree that the claim integrate the abstract idea into a
practical application by "reflect[ing] ... an improvement to other
technology or technical field" (2019 Revised Guidance, 84 Fed. Reg. at 55)
by "providing an improvement to multiple fields" (Appeal Br. 21; see also
Reply Br. 18). 4 The "field of product sales in which users are using the
information in the CRM database" (Appeal Br. 21; Reply Br. 18) is not a
technological or technical field, but a business and commercial field. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 721 (Fed. Cir. 2014) ("In
assessing patent-eligibility, advances in non-technological disciplines such
as nosiness, law, or the social sciences simply do not count.").
The Appellants also contend that the claim is similar to those of DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014),
because "the claimed subject matter is also 'necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks ... "'. Appeal Br. 22 (quoting DDR Holdings, 773
F.3d at 1257); see also Reply Br. 18-19. However, the Appellants do not
state what problem specifically arising in the realm of computer networks or
technology the claim addresses. As noted above, the Specification provides
that the invention allows for better targeting of various customers. Spec. ,-J 2.
This is a business problem and one that existed prior to the Internet. Further,
4 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
them under Step 1 of Alice (Step 2A of Office guidance). See 2019 Revised
Guidance at 55.
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the purported "particular solution" requires conventional, general purpose
computer( s) in the form of "engines" operating in their ordinary and
conventional capacities. See supra.
Thus, we are not persuaded of error in the Examiner's determination
that claim 8 is directed to an abstract idea.
Step Two of the Mayol Alice Framework
Under the second step in the Mayo/Alice framework, and Step 2B of
the 2019 Revised Guidance, we find supported the Examiner's
determination that claim 8' s limitations, taken individually or as an ordered
combination, do not amount to significantly more than the judicial exception
and that "the additional elements are found to be generic computer hardware
carrying out the limitations of the claims in a routine and conventional
manner that was well-known in the art at the time of the invention." Final
Act. 4-6.
We note that, as discussed above, the claim simply recites the
functional results to be achieved by a conventional computer. The claim
"provides only a result-oriented solution[] with insufficient detail for how a
computer accomplishes it. Our law demands more." Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017). The
Appellants do not provide support or reasoning as to how any of the steps of
the claim "[ a ]dd[] a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field." 2019
Revised Guidance, 84 Fed. Reg. at 56. To the extent the Appellants argue
that the claim does not recite an abstract idea because it "recite[ s] subject
matter that is not taught or suggested by the cited references of record," we
disagree. An abstract idea does not transform into an inventive concept just
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because the prior art does not disclose or suggest it. See Mayo, 566 U.S. at
89-90. "Groundbreaking, innovative, or even brilliant discovery does not by
itself satisfy the § 101 inquiry." Ass 'n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, "[t]he 'novelty' of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diehr, 450 U.S. at 188-
89; see also Mayo, 566 U.S. at 91 (rejecting "the Government's invitation to
substitute§§ 102, 103, and 112 inquiries for the better established inquiry
under § 10 l ").
The claimed engines are conventional, general purpose computers.
See supra. It is clear, from the claim and the Specification, that "the
limitations require no improved computer resources [ the Appellants] claim[]
to have invented, just already available computers, with their already basic
functions, to use as tools in executing the claimed process" performed by the
claimed system. SAP America, 898 F.3d at 1169-70. The engines operate
in their ordinary and conventional capacities to perform the well-understood,
routine, and conventional functions of receiving, identifying, determining,
and sending data. See Electric Power, 830 F.3d at 1355-55 (gathering,
sending, monitoring, analyzing, selecting, and presenting information does
not transform the abstract process into a patent-eligible invention);
Alice, 573 U.S. at 226 ("Nearly every computer will include a
'communications controller' and 'data storage unit' capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.").
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Thus, we are not persuaded of error in the Examiner's determination
that the limitations of claim 8 do not transform the claims into significantly
more than the abstract idea.
Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting independent claim 8 under 35 U.S.C. § 101, and we sustain the
rejection of claim 8 and of claims 9-27, which fall with claim 8.
35 U.S.C. § 103(a)- Obviousness
The Appellants contend that the Examiner's rejection of independent
claims 8 and 14 is in error because the prior art, alone or in combination,
does not teach "determining, from the list of users associated with the
opportunity, a second user associated with the first user through an instant
messaging (IM) service," as recited in limitation ( d) of claim 8 and similarly
recited in claim 14. See Appeal Br. 10-13.
The Examiner finds that Knight teaches the limitations of claims 8
and 14 but for the claimed recitations of an instant message ("IM") service.
See Final Act. 7-12. As to the limitation of determining a second user, the
Examiner cites to Knight's paragraphs 18, 21, 22, and 26. Id. at 8, 11. The
Examiner equates Knight's teachings of associations of multiple users with
an object and notification of another user when a change is made to that
object with the claimed determining a second user associated with a first
user. See Ans. 3-4. The Examiner relies on Mondi to "modify the
communication activity stream associated with a CRM system in Knight to
be a unified communication system which includes instant messaging ... in
order to provide users of a CRM system to communicate with a plurality of
users and their devices" (Final Act. 9, 11-12) and for the association being
through an IM service (see id.; Ans. 4). Specifically, the Examiner relies on
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Knight to "show[] that the two users are associated though an activity
stream, which is a form of communication between a plurality of users via
messages" and on Mondi to "modif[y] the message and communication of
Knight to be an IM service." Ans. 3. "Mondri is merely modifying Knight's
messages to be a particular form of communication in order to allow a
plurality of users to communicate." Id. "Further the Examiner asserts that
the limitations 'through an Instant message service' is just the means by
which a user is notified." Id. at 4.
Knight discloses "an approach for implementing implicit follow and
automatic unfollow of objects in an enterprise application system," the
objects "pertaining to sales activities." Knight Abstract, ,-J 8. Users operate
the application through computing systems that interface with the
application. See id. ,-i 18. Objects such as sales opportunities are stored in a
database. See id. ,-i,-i 18, 21. When an activity occurs to the object that is
determined to indicate whether following or unfollowing should occur, the
object is so configured. See id. ,-i 20. For example, a first user may be
automatically designated to follow an object. See id. ,-i 21. When a second
user causes a change to that followed object, a message is placed on the
object's activity stream and that message change/update will be displayed to
the first user. See id. "An activity stream framework 204 identifies the
objects 203 that have changes or been updated, and uses the table 200 to
determine which, if any, users are following the changed objects and will be
provided with the updates/changes." Id. ,-i 26.
The Appellants argue that claim 8 requires "two separate requirements
[to] define the identity of the second user" as claimed. Appeal Br. 11. One
is that a list of users associated with the opportunity is identified, as recited
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in limitation ( c ). The second is that the second user is determined from that
list and associated with the first user through an IM service, as recited in
limitation (d). See id.; see also Reply Br. 4. We disagree with the
Examiner's determination that "the limitations 'through an Instant message
service' is just the means by which a user is notified." Ans. 4. Limitation
( d) of determining is clear that the second user is associated with the first
user through the IM service, not notified.5 Thus, we agree with the
Appellants that claim 8 requires both that the second user is associated with
an opportunity and associated with the first user through the IM service.
We understand the Examiner to equate Knight's object's activity
stream with a communication channel and Mondri's IM service as another
type of communication channel. Although this may be accurate, the
Examiner has not explained how the second user is determined from
Knight's object's activity stream or from Mondri's IM service. We do not
see, and the Examiner does not appear to find (see Final Act. 7-8, 10-11 ),
that users are associated through the activity stream. Rather, the Examiner
appears to find that Knight teaches identifying users associated with an
opportunity by identifying users following the object (see id.), which is
supported by Knight's disclosure (see Knight ,-J 26). The Examiner has not
adequately explained, and we do not see, how Knight teaches determining a
second user that is following the object and is associated with the first user
through the activity stream. And to the extent the Examiner relies on
Mondri's IM service being equivalent to Knight's activity stream, the
5 Even limitation ( e) of sending an alert does not explicitly claim the
notification is through the IM service, but recites that the notification is sent
to the second user of the IM service.
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Examiner has not adequately explained, and we do not see, how the
combination teaches determining a user from the list of users associated with
the opportunity and that is associated with another user through the IM
service.
Thus, we are persuaded of error in the Examiner's rejection of
independent claims 8 and 14, and we do not sustain the Examiner's rejection
under 35 U.S.C. § 103(a) of claims 8, 12-15, 19, 20, and 22.
For the rejections of dependent claims 9-11, 16-18, 21, and 23-27,
the Examiner relies on the same deficient finding of independent claims 8
and 14. See Final Act. 14-18. Thus, for the same reasons as for claims 8
and 14, we also do not sustain the rejections of the dependent claims 9-11,
16-18, 21, and 23-27.
DECISION
The Examiner's rejection of claims 8-27 under 35 U.S.C. § 101 is
AFFIRMED.
The Examiner's rejections of claims 8-27 under 35 U.S.C. § 103(a)
are REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIRMED
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