Ex Parte Flockhart et al

Patent Trial and Appeal Board

Apr 10, 2018

13623310 (P.T.A.B. Apr. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/623,310 09/20/2012
48500 7590 04/12/2018
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Andrew D. Flockhart
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.
4366-601 2716
EXAMINER
ZIMMERMAN, JEFFREY P
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/12/2018 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW D. FLOCKHART, ROBERT C. STEINER, and
JOYLEE KOHLER
Appeal2017-000259 1
Application 13/623,310
Technology Center 3600
Before BRUCE T. WIEDER, BRADLEY B. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
BRADLEYB. BAYAT.
Opinion Concurring filed by Administrative Patent Judge
ROBERT J. SILVERMAN.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
May 17, 2016), Reply Brief ("Reply Br.," filed Sept. 29, 2016), the
Examiner's Answer ("Ans.," mailed July 29, 2016) and the Non-Final Office
Action ("Non-Final Act.," mailed Dec. 17, 2015).
Appeal2017-000259
Application 13/623,310
STATEMENT OF THE CASE
Andrew D. Flockhart et al. ("Appellants")2 appeal under 35 U.S.C.
§ 134(a) from the decision rejecting claims 1-5, 7, 9-14, 16, and 18-22.
Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claimed Subject Matter
Appellants' invention "is directed generally to contact centers and
specifically to creating and attempting to satisfy multiple contact center
objectives simultaneously." Spec. i-f 1.
Claims 1, 10, and 19 are the independent claims on appeal. Claim 1,
reproduced below with added bracketed notations, is illustrative of the
subject matter on appeal:
1. A method comprising:
[(a)] receiving, by a microprocessor of a contact center,
a work item;
[ (b)] simultaneously analyzing, by the microprocessor, a
plurality of objectives, wherein simultaneously analyzing the
plurality of objectives comprises:
normalizing, by the microprocessor, a first
objective in the plurality of objectives with a
second objective in the plurality of objectives,
wherein normalizing, by the microprocessor, the
first objective with the second objective comprises
determining, by the microprocessor, time-adjusted
target ratios for both the first and second objectives
by a function of target ratios and time remaining
and by dividing the target ratio by logN of time
remaining, wherein N is between or equal to 2 and
IO·
'
2 Appellants identify "Avaya Inc." as the real party in interest. Appeal Br. 2.
Claims 6, 8, 15, and 17 have been canceled. Id.
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[(c)] determining, by the microprocessor, an optimal
resource to receive the work item based on the simultaneous
analysis of the plurality of objectives; and
[(d)] routing, by the microprocessor, the work item to
the optimal resource.
Appeal Br. 15 (Claims App'x).
Rejection on Appeal
Claims 1-5, 7, 9-14, 16, and 18-22 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more. Non-
Final Act. 2-5.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. 3 The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 132 S. Ct. 1289 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice,
134 S. Ct. at 2355. The first step in that framework is to "determine whether
3 The "Examiner agrees with Appellant[s'] position that each of independent
claims 1, 10, and 19 are directed to a statutory category of invention."
Ans. 2.
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the claims at issue are directed to one of those patent-ineligible concepts,"
such as an abstract idea. Id. If the claims are not directed to a patent-
ineligible concept, the inquiry ends. If so, the inquiry proceeds to step two
to look at the claim for "something more" by "examin[ing] the elements of
the claim to determine whether it contains an 'inventive concept' sufficient
to 'transform' the claimed abstract idea into a patent-eligible application."
Id. at 2354, 2357 (quoting Mayo, 132 S. Ct. at 1294, 1298). This inventive
concept must do more than simply recite "well-understood, routine,
conventional activity." Mayo, 132 S. Ct. at 1298.
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determined:
Claim 1 is directed to assigning tasks to resources based
on objectives, which is an abstract idea similar to comparing
new and stored information and using rules to identify options.
The processes of receiving a work item and simultaneously
analyzing a plurality of objectives, wherein simultaneously
analyzing the plurality of objectives comprises normalizing a
first objective with a second objective, wherein the normalizing
comprises determining time-adjusted target ratios for both the
first and second objectives by the claimed function (i.e.,
comparing new and stored information, applying rules to
gathered data); and determining an optimal resource to receive
the work item based on the simultaneous analysis (i.e.,
identifying option based on the applied rules), etc., all describe
the abstract idea.
Non-Final Act. 2-3. Proceeding to the second step, the Examiner found
"[ t ]he claim does not include additional elements that are sufficient to
amount to significantly more than the judicial exception because a
microprocessor is merely a generic computer component performing its
conventional functions in implementing the abstract idea." Id. at 3.
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"Additionally, [the Examiner found] routing the work item to the optimum
resource merely describes insignificant post-solution activity" (id.), which
Appellants do not dispute.
As a preliminary matter, we note that Appellants argue all the pending
claims as a group. See Appeal Br. 5-14; see also Reply Br. 2---6. We select
independent claim 1 as representative for this group. Thus, claims 2-5, 7, 9-
14, 16, and 18-22 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants initially contend that a proper foundation to support the
rejection under § 101 is not present and, thus, "the burden has not been
shifted to the Appellant[ s] to rebut and overcome a prima facie case with
regard to the patent eligibility of the subject matter recited in claims 1-5, 7, 9-
14, 16, [and] 18-22." Appeal Br. 7; Reply Br. 2.
35 U.S.C. § 132 sets forth a general notice requirement whereby the
Applicant is notified of the reasons for a rejection together with such
information as may be useful in judging the propriety of continuing with
prosecution of the application. See, e.g., In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011). We find the Examiner provided adequate explanation to
meet the notice requirement. See Non-Final Act. 2-1 0. The Examiner set
forth the statutory basis of the rejection, applied Alice's two-part framework,
and sufficiently articulated reasoning in an informative manner (see supra),
including further analysis and explanation in response to Appellants'
arguments (see Non-Final Act. 5-10), thus, meeting the notice requirement
of Section 132. See Chesterv. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection."). Appellants do not contend that they did not understand the
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Examiner's rejection. To the contrary, Appellants' understanding of the
rejection is manifested by their substantive response to the rejection as set
forth in their briefs.
Alice Step One
"Appellant[ s] submit[] that claims 1, 10, and 19 are not directed to an
'abstract idea' because the claims do not fall within a judicially-created
category." Appeal Br. 8 (emphasis omitted). We disagree.
According to Alice step one, we must determine whether the claims at
issue are directed to a patent-ineligible concept, such as an abstract idea.
Alice, 134 S. Ct. at 2355. The "directed to" inquiry applies a stage-one filter
to the 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);
see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016).
According to the Specification, Appellants' "[ m ]ethods, devices, and
systems are provided such that multiple contact center[4J objectives can be
simultaneously analyzed and normalized by a single algorithm." Abstract.
Representative claim 1 is drawn to a method, comprising four steps: (a)
receiving a work item; (b) simultaneously analyzing a plurality of objectives,
4 "The phrase 'contact center' as used herein refers to a facility used by
companies to manage client contacts made through a variety of mediums
such as telephone, fax, letter, e-mail, and online chat. The majority of large
organizations use contact centers as a means of managing their client
interactions." Spec. i-f 35.
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which comprises normalizing a first objective with a second objective of a
plurality of objectives by applying an algorithm; ( c) determining an optimal
resource to receive the work item based on the simultaneous analysis of the
plurality of objectives; and ( d) routing the work item to the optimal resource.
Each of the above-mentioned steps is performed by a microprocessor.
With respect to computer-enabled claimed subject matter, it is helpful
to determine whether "the claims at issue ... can readily be understood as
simply adding conventional computer components to well-known business
practices" or not. Enfish, 822 F.3d at 1338. In Enfzsh, the Federal Circuit
noted "[ s ]oftware can make non-abstract improvements to computer
technology just as hardware improvements can[.]" Id. at 1335. The court
asked "whether the focus of the claims is on [a] specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Id. at 1335-36. There, the "plain focus of the claims" was on an
improvement to computer functionality itself, a self-referential table for a
computer database designed to improve the way a computer carries out its
basic functions of storing and retrieving data. Id. And, the court in McRO
asked whether the claims as a whole "focus on a specific means or method
that improves the relevant technology" or are "directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
Appellant[ s] submit[] that parallels exist between the claims of
the instant application and those considered in Enfzsh. In
particular, the claims are not directed towards any form of
routing decision making, but recite specific improvements are
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made to a computing system whereby different objectives are to
be satisfied and, if not, additional resources would be required
to perform the operations in a less efficient manner in the
absence of that which is claimed.
Appeal Br. 10; Reply Br. 3. Appellants' reliance on Enfzsh is misplaced.
We determine that claim 1 as a whole is focused on a result; that is,
determining an optimal resource to receive a work assignment-a business
management process, for which a computer is invoked merely as a tool. See
Spec. i-f 2 ("A contact center's success is defined by whether or not the
contact center meets or fails to meet multiple objectives. It is the ultimate
responsibility of the contact center manager to ensure that the contact center
meets its various business objectives."). We find no parallel between claim
1 and the claims in Enfzsh, nor any comparable aspect in claim 1 that
represents an improvement to computer functionality. See Ans. 4. And,
Appellants have not shown how the recited steps of claim 1 are an
improvement to computer capabilities. Unlike Enfzsh, claim 1 is not focused
on an improvement to computer capabilities or functionality (i.e., an
improved microprocessor). Cf In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016) (The claims' focus "was not on an improved
telephone unit or an improved server."). There is a fundamental difference
between computer functionality improvements, on the one hand, and uses of
existing computers as tools to perform a particular task, on the other. "By
considering multiple objectives in parallel when making work assignment
decisions instead of considering single objectives, [Appellants utilize a
computer as a tool to make] decisions and contact center adjustments ...
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with more efficiency and with a minimal use of resources."5 Abstract. This
asserted improvement in efficient decision making and use of human
agents-by applying a mathematical algorithm to compare multiple task
objectives in parallel, is not focused on a specific means or process that
improves computer technology, but rather, on optimizing task assignment-
a managerial decision making process, for which a computer is used for
efficient data processing in its ordinary capacity.
"In determining whether a process claim recites an abstract idea, we
must examine the claim as a whole, keeping in mind that an invention is not
ineligible just because it relies upon a law of nature or mathematical
algorithm." Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758
F.3d 1344, 1350 (Fed. Cir. 2014). As such, "[t]he 'abstract idea' step of the
inquiry calls upon us to 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) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)); see also Enfzsh, 822
F.3d at 1335, quoted in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241
(Fed. Cir. 2016).
Appellants' invention enables contact center managers to administer
business rules, which apply a number of traditionally known metrics, for
5 "The resources 112 can either be completely automated resources (e.g.,
Interactive Voice Response (IVR) units, processors, servers, or the like),
human resources utilizing communication devices (e.g., human agents
utilizing a computer, telephone, laptop, etc.), or any other resource known to
be used in contact centers." Spec. i-f 39.
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determining work assignment decisions based on one or more objectives.
Spec. i-fi-12--4. The Specification describes the problem to be solved:
"[ w ]hen an agent with multiple skills becomes available and the work
assignment engine wishes to assign the next item of work, a question arises
as to how the group of metrics measuring the contact center objectives can
be incorporated into a single assignment decision." Id. i13. Appellants
resolved the problem of comparing the status of objectives of different
metric types by normalizing the target ratios. Id. i-f 10. Normalization is
defined as calculating "'target ratio/logN time-remaining,' where N is 2-10."
Id. i-f 13; see step (b) of Claim 1. Thus, "[a] solution is provided for
executing an algorithm that is able to consider multiple objectives
simultaneously rather than serially." Abstract. The advance over the prior
art and claim 1 as a whole is focused on the concept of normalizing data by
executing a mathematical algorithm.
We conclude the character of claim 1 as a whole is directed to a
mathematical algorithm for determining an optimal resource or "the best
agent" 6 to receive a work item, which is an abstract idea. See Diamond v.
Diehr, 450 U.S. 175, 191 (1981) ("[A] mathematical formula ... 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") (citation omitted); In re Grams, 888 F.2d 835,
837 (Fed. Cir. 1989) ("[M]athematical algorithms join the list of non-
patentable subject matter not within the scope of section 101. "). The
"application of [only] human intelligence to the solution of practical
6 Spec. i167.
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problems, [as here], is no more than a claim to a fundamental principle." In
re Bilski, 545 F.3d 943, 965 (Fed. Cir. 2008) (en bane), aff'd, 130 S. Ct.
3218 (2010) (quotation marks omitted). Claim 1 's focus is on normalizing
task objectives by application of a logarithmic operation and comparing the
results of the calculations.
"[T]he decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen-what
prior cases were about, and which way they were decided." Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(emphasis added). Contrary to Appellants' contention that "the claims do
not resemble anything that has been found by the courts to represent an
abstract idea" (Appeal Br. 8-9), we see little character difference between
the concept here and the "abstract mathematical algorithm for calculating
and comparing regions in space" in Coffelt before the Federal Circuit.
Coffelt v. NVIDIA Corp., 680 F. App'x 1010, 1011 (Fed. Cir. 2017), cert.
denied, 137 S. Ct. 2143 (2017). There, the court determined "[t]he claims
thus recite nothing more than a mathematical algorithm that could be
implemented using a pen and paper" and noted: "[ w ]e have held that
'analyzing information by steps people [can] go through in their minds, or
by mathematical algorithms, without more ... [are] mental processes within
the abstract-idea category.' Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1146 (Fed. Cir. 2016)." Id. at 1011.
Appellants argue the Examiner erred in rejecting the independent
claims under 35 U.S.C. § 101 because "[r]eceiving a work item, analyzing a
plurality of objectives, normalizing the first objective with the second
objective, applying time-adjusted target rations [sic] for both objectives by
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application of a logarithmic operation, and routing the work item to a
determined optimal resource is far beyond the ability of human imagination
or mental activity." Appeal Br. 8. This argument is unpersuasive of error at
least because it does not address the Examiner's actual determination of the
abstract idea, which only encompassed steps (a) through ( c) of claim 1. See
Non-Final Act. 3. Moreover, as discussed, the "directed to" inquiry applies
a stage-one filter to the claim, considered in light of the Specification, based
on whether the character of the claim as a whole is directed to excluded
subject matter, instead of a piecemeal analysis of the claim limitations.
Furthermore, although Appellants acknowledge that the claimed
normalizing step is a mathematical operation, they nevertheless argue that
"[t]he calculations are inherently time sensitive and performed
simultaneously for plural objectives. While a human is capable of doing
math, a human is not capable of performing, in his or her mind or with pen
and paper, the steps as claimed." Appeal Br. 9. We are unpersuaded by
Appellants' argument because mental processes like calculating time-
ad justed ratios, as recited in claim 1, which is a purely arithmetic exercise,
remains unpatentable even when automated to reduce the burden on the user
of what once could have been done with pen and paper. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson[, 409 U.S. 63 (1972)]."). Whether it would be practical for a human
to perform the method using pen and paper is immaterial because "relying
on a computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible." OIP Techs., Inc. v.
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Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134
S. Ct. at 2359). "[T]he inability for the human mind to perform each claim
step does not alone confer patentability. As we have explained, 'the fact that
the required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter."' Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1098
(Fed. Cir. 2016).
We also find unpersuasive Appellants' argument that the "claims do
not preempt a preexisting human activity as shown by the Examiner's
conclusion that claims 1-5, 7, 9-14, 16, [and] 18-22 are allowable over the
prior art." Appeal Br. 9. Indeed, the Supreme Court has explained that "the
prohibition against patenting abstract ideas cannot be circumvented by
attempting to lirnit the use of [the idea] to a particular technological
environment." Alice, 134 S. Ct. at 2358. "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., 788F.3d1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S.
Ct. at 23 54 ). We are instructed that "[ w ]here a patent's claims are deemed
only to disclose patent ineligible subject matter under the [Alice] framework,
[as they are in this case,] preemption concerns are fully addressed and made
moot." Id. Even though "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Id.; see also OIP Techs., 788 F.3d at 1362---63 ("[T]hat the
claims do not preempt all price optimization or may be limited to price
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optimization in the e-commerce setting do not make them any less
abstract.").
Alice Step Two
Turning to the second step of Alice, we agree with the Examiner and
conclude that claim 1 does not contain an inventive concept sufficient to
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (citation omitted). The introduction of a generic
computer or a microprocessor into the claim does not alter the analysis. We
are not apprised of anything in the claims, understood in light of the
Specification, that requires components other than off-the-shelf,
conventional computer, server, and network technology for gathering and
analyzing information, that transforms the abstract idea into a patent-eligible
application. For example, claim 1 is implemented on a generic
microprocessor and the Specification discloses generic devices for
performing the claimed invention. See Spec. i-f 3 8 ("Examples of a suitable
communication device 108 include, but are not limited to, a personal
computer, laptop, Personal Digital Assistant (PDA), cellular phone, smart
phone, telephone, or combinations thereof.").
To qualify as an inventive concept, the implementation of the abstract
idea must involve "more than performance of 'well-understood, routine,
[and] conventional activities previously known to the industry."' Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347--48 (Fed. Cir. 2014) (alteration in original) (quoting Alice, 134
S. Ct. at 2359).
Claim 1 covers a process performed via a generic device well known
for its capability to perform the claimed functions as a matter of routine. For
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example, as to step (a) of "receiving, by a microprocessor of a contact
center, a work item," paragraph 34 of the Specification indicates that the
work item may be in the form of a message "transmitted as a telephone call,
a packet or collection of packets (e.g., IP packets transmitted over an IP
network), an email message, an Instant Message, an SMS message, a fax,
and combinations thereof." These modes of transmitting a work item have
been routinely performed by the aforementioned generic devices. The
analyzing step (b ), which comprises normalizing by a mathematical
algorithm, and the determining step ( c ), which performs a comparison of the
analysis by the microprocessor, encompass the most basic functions of a
computer-performing mathematical calculations and comparing data. 7 See
Spec. i-f 44 ("The normalization module 136 may compare multiple
objectives and the related ratios"). Finally, step ( d) calls for routing, by a
microprocessor, the work item to the optimal resource, which is nothing
more than conventional computer activity of transmitting data, by sending
the work item to the resource. Spec. i-f 66 ("[T]he routing engine 132 may
establish a communication channel or communication session between the
communication device 108 associated with the work item and the customer
communication device of the selected resource 112."); id. i-f 69 ("The routing
engine 132 may send the work item to the assigned resource 112.").
Evaluating these claimed elements either individually or as an ordered
7 "[T]he use of a computer in an otherwise patent-ineligible process for no
more than its most basic function-making calculations or computations-
fails to circumvent the prohibition against patenting abstract ideas and
mental processes." Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada
(US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
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combination, we conclude that claimed steps recite no more than routine
steps involving generic computer components and conventional computer
data processing activities to implement the abstract idea.
To the extent that Appellants maintain that the elements of the claims
necessarily amount to "significantly more" than the abstract idea because the
claimed process is allegedly patentable over the prior art (see Appeal Br.
11 ), Appellants misapprehend the controlling precedent. Although the
second step in the Alice framework is termed a search for an "inventive
concept," the analysis is not an evaluation of novelty or nonobviousness, but
rather, a search for "an element or combination of elements that is 'sufficient
to ensure that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355. A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. at 90. Thus, an abstract
idea is not transformed into an inventive concept just because the Examiner
has not found prior art that discloses or suggests it. Ass 'n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013) (A
"[g]roundbreaking, innovative, or even brilliant" claimed concept does not
by "itself satisfy the§ 101 inquiry."). And, as noted by the court in Coffelt:
"[t]he novelty of the algorithm, however, does not determine whether the
claim recites an inventive concept. Instead, the inventive concept must
'transform' the patent-ineligible algorithm into a 'patent-eligible application'
of the algorithm, and do so by more than merely implementing the algorithm
on a generic computer." Coffelt, 680 F. App'x at 1011 (citing Alice, 134 S.
Ct. at 2355). Claim 1 fails to do so here.
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Finally, we cannot agree with Appellants' contention that the claims
before us are similar to the claims held eligible in Diehr. See Appeal Br. 12;
Reply Br. 4--5. The claims in Diehr were directed to a process for curing
synthetic rubber, and recited a series of steps (e.g., the loading of a mold
with raw, uncured rubber, closing the mold, constantly determining the mold
temperature, constantly recalculating the cure time, and automatically
opening the press at the proper time) that together provided a significant and
novel practical application of the abstract idea (i.e., the well-known
Arrhenius equation). See Diehr, 450 U.S. at 184--87.
Unlike the process claimed in Diehr, which was directed to a specific
industrial process, i.e., "a physical and chemical process for molding
precision synthetic rubber products" (id. at 184), claim 1 merely recites a
computer-implemented method of optimizing task assignment by
mathematical manipulation of data. Achieving a better result by
mathematical manipulation of data does not by itself transform an otherwise
abstract idea into patentable subject matter. The Court held the claims in
Diehr to be patent eligible despite the fact that several steps of the process
used a mathematical equation, not because of it. Id. The only alleged
improvement, as discussed above, lies in the normalization calculation,
which is automated by a generic computer to analyze multiple objectives
simultaneously. Diehr, in contrast, employed the result of its calculations to
determine the cure time of the rubber and signal the mold to open.
In view of the foregoing, we are not persuaded that the Examiner
erred in concluding that claim 1 is directed to non-statutory subject matter.
Accordingly, we sustain the Examiner's rejection of claim 1 under 35 U.S.C.
§ 101, including claims 2-5, 7, 9-14, 16, and 18-22, which fall with claim 1.
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DECISION
The rejection under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
18
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW D. FLOCKHART, ROBERT C. STEINER, and
JOYLEE KOHLER
Appeal2017-000259
Application 13/623 ,310
Technology Center 3600
Before BRUCE T. WIEDER, BRADLEY B. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge, concurring.
I agree with the determination of the foregoing Decision and
respectfully offer the following additional considerations.
I. Legal Framework
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133
S. Ct. 2107, 2116 (2013) (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1293, 1301 (2012)). As the Supreme Court
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explains, "we tread carefully in construing this exclusionary principle lest it
swallow all of patent law," because "[a]t some level, 'all inventions ...
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas."' Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347,
2354 (2014) (citing Mayo, 132 S. Ct. at 1293-94). Accordingly,
ascertaining ineligible subject matter involves a two-step framework for
"distinguish[ing] between patents that claim the buildin[g] block[ s] of
human ingenuity and those that integrate the building blocks into something
more, thereby transform[ing] them into a patent-eligible invention." Id.
(citing Mayo, 132 S. Ct. at 1294, 1303) (internal quotation marks and
citation omitted). First, "we determine whether the claims at issue are
directed to one of those patent-ineligible concepts," such as an abstract idea.
Id. at 2355 (citing Mayo, 132 S. Ct. at 1296-97). Second, we determine
whether the claims contain "an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Id. (citing Mayo, 132
S. Ct. at 1294, 1297-98).
II. The Appealed Rejection
In applying the foregoing principles, the Non-Final Office Action-
in regard to the first step of the Alice/ Mayo analysis - states that claim 1 in
the Appeal "is directed to assigning tasks to resources based on objectives,
which is an abstract idea similar to comparing new and stored information
and using rules to identify options" and goes on to explain:
The processes of receiving a work item and simultaneously
analyzing a plurality of objectives, wherein simultaneously
analyzing the plurality of objectives comprises normalizing a
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first objective with a second objective, wherein the normalizing
comprises determining time-adjusted target ratios for both the
first and second objectives by the claimed function (i.e.,
comparing new and stored information, applying rules to
gathered data); and determining an optimal resource to receive
the work item based on the simultaneous analysis (i.e.,
identifying option based on the applied rules), etc., all describe
the abstract idea.
Non-Final Act. 2-3. With regard to the second Alice/Mayo step, the Non-
Final Office Action states that claim 1 does not include additional elements
that are sufficient to amount to significantly more than the identified abstract
idea, because the recited "microprocessor is merely a generic computer
component performing its conventional functions in implementing the
abstract idea" and the recited "routing ... the work item to the optimal
resource" merely describes insignificant post-solution activity. See id. at 3.
III. Discussion
The two steps of the Alice/ Mayo methodology revolve around the
identification of a judicial exception to patent eligibility, such as an abstract
idea. The Federal Circuit recognizes that "[a]n abstract idea can generally
be described at different levels of abstraction." Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016). This formulation is likely
indebted to the kindred field of copyright law, which has long observed the
malleability of such characterizations (and the effects thereof) in the
analogous practice of ascertaining the proper subject of copyright. Such an
adoption is not surprising, because the legislative authority to craft the twin
protections of patent and copyright law originates from a single
Constitutional source. See U.S. Const. art. I, § 8, cl. 8 ("The Congress shall
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have power ... [t]o promote the progress of science and useful arts, by
securing for limited times to authors and inventors the exclusive right to
their respective writings and discoveries.")
In a celebrated demonstration of the levels-of-abstraction approach,
Judge Learned Hand contemplated to what extent copyright might attach to
"an abstract of the whole" work:
Upon any work, and especially upon a play, a great number of
patterns of increasing generality will fit equally well, as more
and more of the incident is left out. The last may perhaps be no
more than the most general statement of what the play is about,
and at times might consist only of its title; but there is a point in
this series of abstractions where they are no longer protected,
since otherwise the playwright could prevent the use of his
"ideas," to which, apart from their expression, his property is
never extended. . . . If Twelfth Night were copyrighted, it is
quite possible that a second comer might so closely imitate Sir
Toby Belch or Malvolio as to infringe, but it would not be
enough that for one of his characters he cast a riotous knight
who kept wassail to the discomfort of the household, or a vain
and foppish steward who became amorous of his mistress.
These would be no more than Shakespeare's "ideas" in the
play, as little capable of monopoly as Einstein's Doctrine of
Relativity, or Darwin's theory of the Origin of Species. It
follows that the less developed the characters, the less they can
be copyrighted; that is the penalty an author must bear for
marking them too indistinctly.
Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930).
Likewise, the level of abstraction selected in relation to a patent claim
under the Alice/ Mayo approach - so as to circumscribe a purported abstract
idea - is not inconsequential. If narrowly drawn, the characterization might
not fairly describe an abstract idea, which must be a "building block" of
human ingenuity (Alice, 134 S. Ct. at 2354, 2356 (citations omitted)), such
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as a "basic tool[ ] of scientific and technological work" (Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)). On the other hand, if cast broadly, more
details of the claimed limitations would be ripe for consideration as to
whether they might surpass the second step of the Alice/ Mayo analysis, as
constituting claim features that amount to significantly more than the
abstract idea itself. See Alice, 134 S. Ct. at 2355.
Although the Appellants dispute the propriety of the rejection, the
Appellants' analysis applies the description of the identified abstract idea, as
framed by the Examiner. In the instant Appeal, the rejection identifies the
abstract idea as embracing nearly all the features of claim 1, leaving only the
recited "microprocessor" itself and the feature of "routing ... the work item
to the optimal resource" available for consideration under the second
Alice/Mayo step. See Non-Final Act. 3.
Alleging error in the rejection, the Appellants dispute the Examiner's
determination under the first Alice/Mayo step, because the identified abstract
idea of claim 1 could not be "performed in a person's head":
Receiving a work item, analyzing a plurality of objectives,
normalizing the first objective with the second objective,
applying time-adjusted target rations for both objectives by
application of a logarithmic operation, and routing the work
item to a determined optimal resource is far beyond the ability
of human imagination or mental activity.
Appeal Br. 8. This analysis is flawed, because the Appellants include the
"routing" feature - a claim feature the rejection had explicitly excluded
from the identified abstract idea. See Non-Final Act. 3.
Still further, the Appellants concede that claimed subject matter could
be accomplished mentally, but contend that the "simultaneous[]" feature of
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claim 1 prevents the claim as a whole from being directed to an abstract
idea:
The claims require, simultaneously analyzing a plurality of
objectives by normalizing first and second objectives via
logarithmic calculations to determine an optimal resource and
routing the work item to the optimal resource. The calculations
are inherently time sensitive and performed simultaneously for
plural objectives. While a human is capable of doing math, a
human is not capable of performing, in his or her mind or with
pen and paper, the steps as claimed- as the claims as a whole
must be given due consideration - including, but not limited
to, the simultaneous analysis.
Appeal Br. 9. The Appellants, again, include the "routing" feature in this
discussion, which renders the analysis defective, as discussed above. In any
event, the Appellants' reliance upon the recited "simultane[ity]" is
misplaced because claim 1 does not require "simultaneously analyzing a
plurality of objectives ... and routing the work item to the optimal resource"
(id.) as the Appellants contend. Moreover, the "simultaneous[ ]" feature of
claim 1 simply requires "simultaneously analyzing the plurality of
objectives" and the Appellants do not contend that such an operation might
surpass what could be accomplished mentally. The Appellants' arguments
are unpersuasive of error, as to the first Alice/Mayo step.
The Appellants' critique of the rejection, under the second step of the
Alice/Mayo methodology, involves shortcomings similar to those identified
above, in regard to the first step. Specifically, the Appellants' argument
relies upon the recited "normalizing" feature for providing "significantly
more" than the identified abstract idea itself. See Appeal Br. 12-13. Yet,
having assented to the confines of the abstract idea, as identified in the
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rejection, such arguments violate the strictures of the Alice/Mayo
methodology and, therefore, cannot demonstrate reversible error.
7