LEVEL 3 COMMUNICATIONS, LLC

Patent Trials and Appeals Board

Mar 4, 2020

13865023 - (D) (P.T.A.B. Mar. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/865,023 04/17/2013 Thomas F. Van Buskirk 0418-US-U1 8055
83579 7590 03/04/2020
LEVEL 3 COMMUNICATIONS, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
EXAMINER
GLENNIE, DEBRA L
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/04/2020 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):
patent.docketing@level3.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS F. VAN BUSKIRK, STEPHEN A. ZIELE,
CHARLES C. WILLIAMS, KRISTA LOUISE MILHOLM,
ROBERT ANDREW MCCARROLL, and MUSTAPHA ILES
Appeal 2018-003821
Application 13/865,023
Technology Center 3600
BEFORE ADAM J. PYONIN, MICHAEL J. ENGLE, and
SCOTT RAEVSKY, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Level 3 Communications, LLC (“Appellant”1) appeals under 35
U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 3–8, 10–
15, and 17–23, which are all of the claims pending in the application. Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Level 3
Communications, LLC of Broomfield, Colorado. Appeal Br. 3.
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TECHNOLOGY
The claims are directed to “providing one or more questions and/or
prompts to . . . customers that enable the customer to identify, diagnose,
and/or resolve any technical problems the customer may currently be
facing,” including using “a graphical user interface . . . to automatically . . .
generate the series of questions/prompts provided to the customer.” Spec.
Abstract.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A method for generating questions, comprising:
authenticating a user to obtain classification data that
identifies a group of users for which at least one question,
associated with the group of users, is displayed, the at least one
question stored in a prompt tree data structure comprising a
collection of nodes defining a hierarchical relationship between
the at least one question, a response, and at least one other
question;
providing the at least one question to the user for display;
receiving the response for the at least one question; and
in response to receiving the response, providing the at least
one other question to the user, the at least one other question
hierarchically associated with at least one command that, when
executed by a computing device, automatically initiates
generation of a trouble ticket corresponding to the at least one
question.
REJECTIONS
Claims 1, 3–8, 10–15, and 17–21 stand rejected under 35 U.S.C. § 101
as being directed to ineligible subject matter without significantly more.
Final Act. 2.
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Claims 1, 3–8, 10–15, and 17–21 stand rejected under 35 U.S.C. § 103
as obvious over Malden (US 7,765,165 B2; July 27, 2010) and Coughlin
(US 2007/0106542 A1; May 10, 2007). Final Act. 18.
ISSUES
1. Did the Examiner err in concluding that claim 1 was directed to
patent-ineligible subject matter without significantly more under § 101?
2. Did the Examiner err in finding Malden teaches or suggests
“classification data that identifies a group of users” and “a hierarchical
relationship between the at least one question, a response, and at least one
other question,” as recited in claim 1?
3. Did the Examiner err in finding the combination of Malden and
Coughlin teaches or suggests “the at least one other question hierarchically
associated with at least one command that, when executed by a computing
device, automatically initiates generation of a trouble ticket corresponding to
the at least one question,” as recited in claim 1?
ANALYSIS
§ 101
Section 101 defines patentable subject matter: “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.” 35 U.S.C. § 101. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[l]aws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
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(quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law,
based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). A
court must be cognizant that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas” (Mayo, 566 U.S. at 71), and “describing the claims at . . . a high level
of abstraction and untethered from the language of the claims all but ensures
that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “we evaluate the
focus of the claimed advance over the prior art to determine if the character
of the claim as a whole, considered in light of the specification, is directed to
excluded subject matter.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
1084, 1092 (Fed. Cir. 2019) (quotation omitted). “The inquiry often is
whether the claims are directed to ‘a specific means or method’ for
improving technology or whether they are simply directed to an abstract
end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed.
Cir. 2017).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
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at 79, 78). The Supreme Court has “described step two of this analysis as a
search for an ‘inventive concept’—i.e., 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. at
217–18 (quotation omitted). However, “[t]he abstract idea itself cannot
supply the inventive concept, no matter how groundbreaking the advance.”
Trading Techs., 921 F.3d at 1093 (quotation omitted). Moreover, “features
that are not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice
analysis.” Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355,
1363 (Fed. Cir. 2019).
In 2019, the U.S. Patent & Trademark Office published revised
guidance on the application of § 101. USPTO, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”);
USPTO, October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (“Oct. Update”). Under that guidance, we look to whether the claim
recites
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation that
could be performed in the human mind;
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(2) any additional limitations beyond the judicial exception that
integrate the judicial exception into a practical application (see
MPEP § 2106.05(a)–(c), (e)–(h)); and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56.
USPTO Step 2A, Prong 1
Here, claim 1 recites the following, with italics, brackets, and
whitespace added:
[(A)] authenticating a user to obtain classification data that
identifies a group of users for which at least one question,
associated with the group of users, [(B)] is displayed,
[(C)] the at least one question stored in a prompt tree data
structure comprising a collection of nodes defining a hierarchical
relationship between the at least one question, a response, and at
least one other question;
[(D)] providing the at least one question to the user for
display;
[(E)] receiving the response for the at least one question;
and
[(F)] in response to receiving the response, providing the
at least one other question to the user,
[(G)] the at least one other question hierarchically
associated with at least one command that, when executed by a
computing device, automatically initiates generation of a trouble
ticket corresponding to the at least one question.
Thus, claim 1 recites providing a series of hierarchically-related questions
and answers in order to generate a trouble ticket, where the first question is
based upon a classification of the user in a group. See also Final Act. 3.
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Other than the displaying and computing device (italicized above), all
of the limitations can be performed either mentally (e.g., steps A, C, and G)
or verbally between two people (e.g., steps B and D–F). For example, the
Specification explains that “[a]ny input received may be processed and used
to identify a particular user and any corresponding classification data
corresponding to the user” and “[u]ser authentication data includes any
information that may be used to identify a particular user, such as name,
customer contact information, unique identifier (e.g. number, code), business
type, etc.” Spec. ¶ 29. Thus, a store owner can mentally use a customer’s
name or face to remember what type of product that customer previously
bought. A store owner also can mentally have a series of questions to help
narrow in on the problem and solution, where each subsequent question is
based on the answers to the previous questions (e.g., “What seems to be the
problem?” with the next question being “Have you tried _____?” where the
blank changes depending upon the answer to the first question). And once
the last question identifies the problem or solution, a store owner can make a
mental or written note (i.e., “trouble ticket”), such as to order a replacement
part or to follow up with the customer later that week. Claim 1 therefore
recites mental processes, which are abstract ideas. E.g., Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (“we have
treated analyzing information by steps people go through in their minds, . . .
without more, as essentially mental processes within the abstract-idea
category”).
Similarly, asking a question and receiving an answer (e.g., a store
owner verbally asking questions of a customer) are basic human
communication that form one foundation of collecting information. These
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steps therefore also fall within managing personal behavior or relationships
or interactions between people, which are among the certain methods of
organizing human activity identified as abstract ideas. See, e.g., MPEP
§ 2106.04(a)(2)(II); see also Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1327 (Fed. Cir. 2017) (“We have previously held other
patent claims ineligible for reciting similar abstract concepts that merely
collect, classify, or otherwise filter data.”).
The October Update makes clear that the Guidance’s groupings
“encompass both activity of a single person (for example, a person following
a set of instructions or a person signing a contract online) and activity that
involves multiple people (such as a commercial interaction), and thus,
certain activity between a person and a computer (for example a method of
anonymous loan shopping that a person conducts using a mobile phone) may
fall within the ‘certain methods of organizing human activity’ grouping.”
Oct. Update 4. Moreover, “[a]dding one abstract idea . . . to another abstract
idea . . . does not render the claim non-abstract.” RecogniCorp, LLC, 855
F.3d at 1327; see also Oct. Update 2.
Claim 1 therefore recites an abstract idea.
USPTO Step 2A, Prong 2
As presently written, the additional limitations beyond the judicial
exception (i.e., displaying and the computing device) have repeatedly been
held insufficient under § 101. For example, the collection and display of
information on a conventional computer was held unpatentable in Electric
Power Group:
Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available
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information in a particular field, stating those functions in
general terms, without limiting them to technical means for
performing the functions that are arguably an advance over
conventional computer and network technology. The claims,
defining a desirable information-based result and not limited to
inventive means of achieving the result, fail under § 101.
Elec. Power, 830 F.3d at 1351; see also Univ. of Fla. Research Found., Inc.
v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019) (“This is a
quintessential ‘do it on a computer’ patent: it acknowledges that [such] data
. . . was previously collected, analyzed, manipulated, and displayed
manually, and it simply proposes doing so with a computer. We have held
such claims are directed to abstract ideas.”).
We are not persuaded claim 1 recites a limitation that reflects an
improvement in the functioning of the computer itself or any other
technology or technical field. In fact, the claimed “command” is not even
limited to a computer command. E.g., Spec. ¶ 24 (“action(s) (referred to as
‘Commands’)”; “A command represents an action that needs to be
implemented”). Thus, absent further technical details for how the claimed
process is achieved, the computing environment merely automates a manual
or mental process, such as a customer service or call center employee
following a script. See Ans. 6–7 (discussing “phone trees”). “[M]ere
automation of manual processes using generic computers does not constitute
a patentable improvement in computer technology.” Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Therefore,
claim 1 as a whole does not integrate the recited judicial exception into a
practical application.
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USPTO Step 2B
Claim 1 also does not provide any other inventive concept or
significantly more than the recited judicial exception. To the contrary, the
Specification describes the computing device as generic. E.g., Spec. ¶¶ 39
(“Processor(s) 502 can be any known processor”), 21 (“server 202 . . . may
be a personal computer, work station, server, mobile device, mobile phone,
processor, and/or other type of processing device and may include one or
more processors that process software or other machine-readable
instructions”), 23 (same for “administrator device 206”), 28 (same for “user
device 204”). As the Supreme Court has said, “the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 573 U.S. at 223. Similarly, the mere
“display” of information without any technical improvement to how the
information is displayed is insufficient under § 101. E.g., Trading Techs.,
921 F.3d 1084 (addressing three patents related to the “display” of bids and
offers in a GUI for electronic trading). Therefore, we agree with the
Examiner that the additional limitations, individually and in ordered
combination, do not provide for an inventive concept that is significantly
more than the recited judicial exception. See Final Act. 8.
Conclusion
Accordingly, we sustain the rejection under § 101 of claim 1, and
claims 3–8, 10–15, and 17–21, which Appellant argues are patentable for
similar reasons. See App. Br. 17, 20; 37 C.F.R. § 41.37(c)(1)(iv).
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§ 103
For obviousness, Appellant argues three limitations. First, claim 1
recites “classification data that identifies a group of users.”
Appellant argues that Malden teaches data that identifies an individual
or specific user, not a group of users. Appeal Br. 22; Reply Br. 4–5. We are
not persuaded by Appellant’s argument. As the Examiner correctly points
out, Malden discloses identifying both the “type of inquiry ([e.g.,] sales or
service or other interaction)” and the “product.” See, e.g., Final Act. 19;
Ans. 9–11; see also Malden 3:11–16, 4:17–24, 4:66–5:21. “For instance, if
the customer 14 is calling to troubleshoot a product that was recently
purchased, the agent 24 can initiate a script related to troubleshooting for
that particular product.” Malden 5:10–12. In the present application, the
Specification states, “Any input received may be processed and used to
identify a particular user and any corresponding classification data
corresponding to the user.” Spec. ¶ 29 (emphasis added). Therefore,
Malden’s classifying customers by inquiry type or product is “classification
data that identifies a group of users” (e.g., the group of customers who are
interested in troubleshooting or the group of customers who are interested in
a particular product).
Second, claim 1 further recites “a hierarchical relationship between
the at least one question, a response, and at least one other question.”
Appellant argues that “Malden fails to teach a hierarchical
relationship comprising a response, much less [the full limitation].” Appeal
Br. 22. However, Malden discloses that “[b]ranching logic determines the
appropriate information to present to the user based on answers to previous
questions.” Malden 3:28–30 (emphasis added); see also Ans. 11. Malden
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further discloses that “subsequent questions . . . can be presented to the
customer . . . based on prior answers.” Malden 5:5–9 (emphasis added). An
answer is a “response” and Malden’s branching logic provides a
“hierarchical relationship” in which answers to previous questions can
determine subsequent questions. Therefore, Appellant fails to adequately
explain how Malden fails to teach or suggest this limitation.
Third, claim 1 also recites “the at least one other question
hierarchically associated with at least one command that, when executed by
a computing device, automatically initiates generation of a trouble ticket
corresponding to the at least one question.”
Appellant argues that Malden’s “merely saving and resuming contact
with a customer is not analogous” to “one command that . . . automatically
initiates generation of a trouble ticket.” Appeal Br. 22–23. Further,
Appellant argues that “while Coughlin discloses a ‘problem ticket,’
Coughlin also fails to teach” a command that “automatically initiates
generation of a trouble ticket corresponding to the at least one question.” Id.
at 23. However, we agree with the Examiner that one cannot show non-
obviousness by attacking references individually when the rejections are
based on a combination of references. Ans. 11–12 (citing In re Keller, 642
F.2d 413 (CCPA 1981)). Here, the Examiner relies on Malden for teaching
or suggesting a “command that . . . automatically initiates generation of a
[identification] corresponding to the at least one question,” and relies on
Coughlin for teaching that such an identification could be labeled a “ticket.”
Final Act. 21–23 (emphasis omitted), 22–24. The Examiner also provided a
specific rationale why it would have been obvious to a person of ordinary
skill in the art to implement Malden using Coughlin’s ticket. Id. at 24.
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Thus, Appellant attacks the references individually but fails to sufficiently
address the Examiner’s proposed combination.
Accordingly, we sustain the Examiner’s rejection under § 103 of
claim 1, and claims 3–8, 10–15, and 17–21, which Appellant argues are
patentable for similar reasons. See App. Br. 25; 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
The following table summarizes the outcome of each rejection:
Claims
Rejected Statute Basis Affirmed Reversed
1, 3–8, 10–15,
17–21
§ 101 1, 3–8, 10–15,
17–21

1, 3–8, 10–15,
17–21
§ 103 Malden,
Coughlin
1, 3–8, 10–15,
17–21

OVERALL 1, 3–8, 10–15,
17–21

TIME TO RESPOND
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.36(a)(1)(iv).
AFFIRMED