ServiceNow, Inc.

Patent Trials and Appeals Board

Feb 24, 2022

2021002878 (P.T.A.B. Feb. 24, 2022)

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. 15/722,733 10/02/2017 Sanjay Gupta SERV:0375 3104 145139 7590 02/24/2022 ServiceNow c/o Fletcher Yoder PC P.O. Box 692289 Houston, TX 77269 EXAMINER LABOGIN, DORETHEA L ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 02/24/2022 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): docket@fyiplaw.com hill@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SANJAY GUPTA, HARISH KUMAR BALACHANDRA BELLAMANE, SARATH AMBATI, SARUP PAUL, and CAMERON WHEELER ____________ Appeal 2021-002878 Application 15/722,733 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and NINA L. MEDLOCK, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-002878 Application 15/722,733 2 STATEMENT OF THE CASE1 Sanjay Gupta, Harish Kumar Balachandra Bellamane, Sarath Ambati, Sarup Paul, and Cameron Wheeler (Appellant2) seek review under 35 U.S.C. § 134 of a final rejection of claims 1-3 and 5-21, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a way of building user profiles to identify skills or areas of expertise possessed by the users, identifying skills associated with tasks, and assigning tasks to the users possessing the associated skills. Specification para. 4. An understanding of the invention can be derived from a reading of exemplary claim 8, which is reproduced below (bracketed matter and some paragraphing added). 8. A system, comprising: a non-transitory memory; and one or more hardware processors configured to read instructions from the non-transitory memory to perform operations comprising: 1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal Br.,” filed October 21, 2020) and Reply Brief (“Reply Br.,” filed March 26, 2021), and the Examiner’s Answer (“Ans.,” mailed February 3, 2021), and Final Action (“Final Act.,” mailed May 27, 2020). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as ServiceNow Inc. (Appeal Br. 2). Appeal 2021-002878 Application 15/722,733 3 [1] training a machine learning algorithm to identify one or more skills associated with activities of service requests based at least in part on training data; [2] receiving activity data corresponding to an activity that has occurred; [3] identifying one or more profiles that will receive points for the activity; [4] identifying, via the machine learning algorithm, one or more skills associated with the activity; [5] calculating a number of points to be awarded for each of the one or more skills; [6] updating the one or more profiles to reflect points awarded to the one or more skills; and [7] assigning a service request to a first profile of the one or more profiles based at least in part on the first profile having points corresponding to the one or more skills associated with the service request. The Examiner relies upon the following prior art: Name Reference Date Elenbaas US 2009/0204471 A1 Aug. 13, 2009 Blassin US 2016/0162478 A1 June 9, 2016 Appeal 2021-002878 Application 15/722,733 4 Claims 8-20 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more.3 Claims 8-20 stand rejected under 35 U.S.C. § 102(a) (1) as anticipated by Elenbaas. Claims 1-3, 5-7, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Elenbaas and Blassin. ISSUES The issues of eligible subject matter turn primarily on whether the claims recite more than abstract conceptual advice of results desired. The issues of anticipation and obviousness turn primarily on whether Elenbaas describes identifying, via a machine learning algorithm, one or more skills associated with an activity. FACTS PERTINENT TO THE ISSUES Facts Related to the Prior Art Elenbaas 01. Elenbaas is directed to establishing a marketplace for workers and job owners, and more specifically to coordinating jobs or tasks among a plurality of job owners and workers online. Elenbaas para. 1. 02. Elenbaas describes assigning different levels of trustworthiness of a user accessing an online work management system. A set of 3 Claim 13 appears to depend from claim 1 - check file rapper claims. Appeal 2021-002878 Application 15/722,733 5 information for verifying the trustworthiness of a user is retrieved or accessed from various sources. A trust quotient is generated based on the retrieved set of information to indicate the trustworthiness of the user. Tasks are associated with minimum levels of trust quotients that must be satisfied by a user to be eligible for the task. Elenbaas para. 6. 03. Elenbaas describes regression and machine learning techniques to determine which methods are more accurate in predicting performance relative to reputation scores and how each factor should be weighted in the prediction. Elenbaas para. 165. 04. Elenbaas describes the reputation score manager having a regression engine that automatically identifies the key independent variables for a worker or job owner: (i) across tasks, (ii) for a category of tasks, and (iii) for a given task. Thus, a worker and job owner’s reputations are not only universal to all jobs, but are provided relative to the eight reputation scores for a specific task or category of tasks. Elenbaas para. 166. 05. Elenbaas describes the math of regression engines being well- known to those skilled in the art. The quality of the predictions is improved by Boosting algorithms, a machine learning technique that assists in the selection of independent variables and in the determination of the optimal weighting in the regression. Elenbaas para. 167. 06. Elenbaas describes the reputation score manager collecting detailed data to feed the regressions, as each job is executed on the characteristics of the worker and job owner and on the results. Appeal 2021-002878 Application 15/722,733 6 The reputation score manager assembles a historical data set by which the task results (dependent variables) can be compared to (i) the characteristics of the workers who delivered them and (ii) the characteristics of the job owners that defined the jobs and approved them (independent variables). The data set feeds the regression estimates. Elenbaas para. 168. 07. Elenbaas describes the regression formulas for a given task or a category of tasks being recalculated as new data are collected. The triggers for recalculation can be either periodic (if computing resources are not a factor) or they can be determined mathematically when analysis of the data set indicates that recalculation of the regression estimators may yield a statistically significant change. Example triggers may be that the relevant data set has increased substantially in size or that the averages or the median of an independent variable has shifted significantly. Elenbaas para. 169. ANALYSIS Claims 8-20 rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more STEP 14 Initially we note that claim 8 is nominally a system claim, but comprises generic memory and processors that then perform seven process 4 For continuity of analysis, we adopt the steps nomenclature from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Appeal 2021-002878 Application 15/722,733 7 steps. Claim 8 is therefore a process claim in substance and we refer to it as such in the analysis of this rejection. Claim 8, as substantively a method claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it is directed to a judicial exception without significantly more. STEP 2 The Supreme Court: set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us? To answer that question, . . . 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. [The Court] 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.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014) (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine what the claims are directed to. This begins by determining whether the claims recite one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea). Then, if the claims recite a judicial exception, determining whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims “apply, rely on, or use the Appeal 2021-002878 Application 15/722,733 8 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.” Revised Guidance, 84 Fed. Reg. at 54. If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception. STEP 2A Prong 1 At a high level, and for our preliminary analysis, we note that method claim 8 recites training a machine learning algorithm, receiving activity data, identifying profile and skill data, calculating points data, updating profile data, and assigning request data. Training a machine learning algorithm per se is data processing. Identifying and calculating data are rudimentary data analysis. Assigning data is data generation. Thus, claim 8 recites processing, receiving, analyzing, updating, and generating data. None of the limitations recites technological implementation details for any of these steps, but instead recite only results desired by any and all possible means. From this we see that claim 8 does not recite the judicial exceptions of either natural phenomena or laws of nature. Under Supreme Court precedent, claims directed purely to an abstract idea are patent ineligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include (1) mathematical concepts,5 (2) certain methods of organizing 5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Appeal 2021-002878 Application 15/722,733 9 human activity,6 and (3) mental processes.7 Among those certain methods of organizing human activity listed in the Revised Guidance are managing personal behavior or relationships or interactions between people. Like those concepts, claim 8 recites the concept of managing human resources. Specifically, claim 8 recites operations that would ordinarily take place in advising one to select someone based on his skills profile as it matches activities needed. The advice to select someone based on his skills profile as it matches activities needed involves matching a service need to one able to meet it, which is an managerial act, and identifying needed skills, which is an act ordinarily performed in the stream of human resource management. For example, claim 8 recites “assigning a service request,” which is an activity that would take place whenever one is managing services. Similarly, claim 1 recites “identify one or more skills associated with activities,” which is also characteristic of human resource management. The Examiner determines the claims to be directed to assigning a task/service request to an agent which is directed to commercial interactions and managing personal behavior of interactions between people and following rules or instructions. Final Act. 11. The preamble to claim 8 Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). 6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160-61 (Fed. Cir. 2018). 7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Appeal 2021-002878 Application 15/722,733 10 does not recite what it is to achieve, but the steps in claim 8 result in managing human resources by selecting someone based on his skills profile as it matches activities needed absent any technological mechanism other than a conventional computer for doing so. As to the specific limitations, limitation 2 recites receiving data. Limitations 1 and 3-7 recite generic and conventional processing, receiving, analyzing, updating, and generating of skills and activity data, which advise one to apply generic functions to get to these results. The limitations thus recite advice for selecting someone based on his skills profile as it matches activities needed. To advocate selecting someone based on his skills profile as it matches activities needed is conceptual advice for results desired and not technological operations. The Specification at paragraph 4 describes the invention as relating to building user profiles to identify skills or areas of expertise possessed by the users, identifying skills associated with tasks, and assigning tasks to the users possessing the associated skills. Thus, all this intrinsic evidence shows that claim 8 recites managing human resources. This is consistent with the Examiner’s determination. This in turn is an example of managing personal behavior or relationships or interactions between people as a certain method of organizing human activity because managing human resources is managing interactions between participants. The concept of managing human resources by selecting someone based on his skills profile as it matches activities needed is one idea for selecting such resources. The steps recited in claim 8 are part of how this might conceptually be premised. Appeal 2021-002878 Application 15/722,733 11 Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (claims that implemented the abstract idea of generating tasks based on rules on the occurrence of an event). Alternately, this is an example of concepts performed in the human mind as mental processes because the steps of processing, receiving, analyzing, updating, and generating data mimic human thought processes of observation, evaluation, judgment, and opinion, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claim 8, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data processing, reception, analysis, update, and generation and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). As such, claim 8 recites processing, receiving, analyzing, updating, and generating data, and not a technological implementation or application of that idea. From this we conclude that at least to this degree, claim 8 recites managing human resources by selecting someone based on his skills profile as it matches activities needed, which is managing personal behavior or relationships or interactions between people, one of certain methods of Appeal 2021-002878 Application 15/722,733 12 organizing human activity identified in the Revised Guidance, and, thus, an abstract idea. STEP 2A Prong 2 The next issue is whether claim 8 not only recites, but is more precisely directed to this concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept i.e. integrated into a practical application.8 At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, “all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. “[A]pplication[s]” of such concepts “ ‘to a new and useful end,’ ” we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted). Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed purely in terms of results, devoid of implementation details. Step 2 is a pure data gathering step. Limitations describing the nature of the data do not alter this. Steps 6 and 7 recite basic conventional data operations such as generating, updating, and storing data. Steps 1 and 3-5 recite generic computer processing expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. All purported inventive aspects reside in how 8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). Appeal 2021-002878 Application 15/722,733 13 the data are interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results. Viewed as a whole, Appellant’s claim 8 simply recites the concept of managing human resources by selecting someone based on his skills profile as it matches activities needed as performed by a generic computer. This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and does not recite any particular implementation. Claim 8 does not, for example, purport to improve the functioning of the computer itself. Nor does it affect an improvement in any other technology or technical field. The 26+ pages of specification only spell out different generic equipment9 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of managing human resources by selecting someone based on their skills profile as it matches activities needed under different scenarios. They do not describe any particular improvement in the manner a computer functions. Instead, claim 8 at issue amounts to nothing significantly more than an instruction to apply managing human resources by selecting someone based on his skills profile as it matches activities needed using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26. 9 The Specification describes a mobile phone, a tablet computer, a laptop computer, a notebook computer, a desktop computer, or any other suitable computing device or combination of computing devices. Spec. para. 19. Appeal 2021-002878 Application 15/722,733 14 None of the limitations reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. We conclude that claim 8 is directed to achieving the result of managing human resources by advising one to select someone based on his skills profile as it matches activities needed, as distinguished from a technological improvement for achieving or applying that result. This amounts to managing personal behavior or relationships or interactions between people, which fall within certain methods of organizing human activity that constitute abstract ideas. The claim does not integrate the judicial exception into a practical application. STEP 2B The next issue is whether claim 8 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. The introduction of a computer into the claims does not generally alter the analysis at Mayo step two: the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Appeal 2021-002878 Application 15/722,733 15 Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional feature[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223-24 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer.” Alice, 573 U.S. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer for processing, receiving, analyzing, updating, and generating data amounts to electronic data query and retrieval-one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). None of these activities is used in some Appeal 2021-002878 Application 15/722,733 16 unconventional manner nor does any produce some unexpected result. Appellant does not contend it invented any of these activities. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claim 8 add nothing that is not already present when the steps are considered separately. The sequence of data processing-reception- analysis-update-generation is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. We conclude that claim 8 does not provide an inventive concept because the additional elements recited in the claim do not provide significantly more than the recited judicial exception. Appeal 2021-002878 Application 15/722,733 17 REMAINING CLAIMS Claim 8 is representative. The remaining dependent claims merely describe process parameters. We conclude that the method claims at issue are directed to a patent-ineligible concept itself, and not to the practical application of that concept. As to the structural claims, they are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] ... against” interpreting § 101“in ways that make patent eligibility ‘depend simply on the draftsman’s art.’ Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any particular machine. LEGAL CONCLUSION From these determinations we further determine that the claims do not recite an improvement to the functioning of the computer itself or to any other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this we conclude the claims are directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by the managing personal behavior or relationships or interactions between people of managing human resources by advising one to select someone based on his skills profile as it matches activities needed, without significantly more. APPELLANT’S ARGUMENTS As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s determinations and analysis from Final Action 10-14 and Answer 4-10 and reach similar legal conclusions. We now turn to the Reply Brief. Appeal 2021-002878 Application 15/722,733 18 We are not persuaded by Appellant's argument that: independent claim 8 does not merely recite a “generic recitation of a machine learning algorithm,” but rather a specific utilization of a machine learning algorithm used in such a way to improve the overall system. For example and as discussed further below, independent claim 8 recites, “training a machine learning algorithm to identify one or more skills associated with activities of service requests based at least in part on training data... [and] identifying, via the machine learning algorithm, one or more skills associated with the activity." Such a specific and, as discussed below, novel usage of the machine learning algorithm goes well beyond a “generic recitation,” but rather goes so far as to reveal the practical application of improving the identification of skills associated with activities of a service request. Reply Br. 2-3. Claim 8 recites “training a machine learning algorithm to identify one or more skills” and “identifying, via the machine learning algorithm, one or more skills.” These recitations are only for generic machine training and identifying data. There is nothing specific about these recitations other than being specified using words. Appellant does not contend it invented machine learning algorithms in general or any such algorithm in particular. Machine learning algorithms have existed for over 35 years.10 The Specification and drawings do not describe any such algorithm, but only describe using such an algorithm to identify nodes, edges, and networks. In fact, that is the extent of the disclosure, telling the reader to so use an algorithm without technological details as to how such skills are actually identified. An invocation to use such old technology in the manner it is intended to be used for its ordinary purpose is both generic and conventional. 10 See e.g. Proceedings of the ... International Workshop on Machine Learning. (1985). United States: Morgan Kaufmann Publishers. Appeal 2021-002878 Application 15/722,733 19 At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea. Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). There is also nothing novel about such operations. Any such novelty obtains only as to the particular data operated upon, which cannot confer eligibility. See SAP Am. above. In any event, novelty is not at issue here. “A claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). We are not persuaded by Appellant's argument that “independent claims 8 and 14 recite physical hardware processors to perform operations which include training of a machine learning algorithm, which cannot reasonably said to be done in the human mind.” Reply Br. 3. The recitation of physical hardware is one of context rather than technological implementation detail. “The Supreme Court and this court have repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.” Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). As to learning per se, such an argument overlooks the entire education system. Reciting machine learning is placing such learning in a computer context, offering no technological implementation details beyond the conceptual idea to use a machine for learning. Appeal 2021-002878 Application 15/722,733 20 Appellant next argues that the present claims are patent eligible because they are similar to the USPTO’s Example 39 in the “Subject Matter Eligibility Examples: Abstract Ideas,” published January 7, 2019 (“2019 Eligibility Examples”). Reply Br. 3-4. More particularly, Appellant argues “one of ordinary skill in the art would understand that a neural network is essentially a machine learning model. Moreover, any technical differences between a neural network and a machine learning algorithm are immaterial to the overarching rejection and recognition of patentable subject matter.” Reply Br. 4. The difficulty with Appellant’s argument is that Example 39 was deemed patent eligible because it provided training of a neural network for facial detection. See 2019 Eligibility Examples, 8-9. The guidelines said: expanded training set is developed by applying mathematical transformation functions on an acquired set of facial images. These transformations can include affine transformations, for example, rotating, shifting, or mirroring or filtering transformations, for example, smoothing or contrast reduction. The neural networks are then trained with this expanded training set using stochastic learning with backpropagation which is a type of machine learning algorithm that uses the gradient of a mathematical loss function to adjust the weights of the network. Unfortunately, the introduction of an expanded training set increases false positives when classifying non-facial images. Accordingly, the second feature of applicant’s invention is the minimization of these false positives by performing an iterative training algorithm, in which the system is retrained with an updated training set containing the false positives produced after face detection has been performed on a set of non-facial images. This combination of features provides a robust face detection model that can detect faces in distorted images while limiting the number of false positives Appeal 2021-002878 Application 15/722,733 21 Thus, Example 39 addressed technological difficulties related to analyzing graphic images to identify and analyze facial images within them. Appellant has neither identified nor demonstrated that the present claims provide such image analysis. Instead, the Specification says the claims are directed to building user profiles to identify skills or areas of expertise possessed by the users, identifying skills associated with tasks, and assigning tasks to the users possessing the associated skills (Specification para. 4), which would include conventional textual data. Such analysis of textual data is the bread and butter of mental processes. We are not persuaded by Appellant’s argument that “none of these enumerated examples can reasonably be interpreted as being analogous to the instant claims.” Reply Br. 5. The issue is not analogy to specific cases, but whether the claims are directed to ineligible subject matter. We show above the analysis as to why the claims are directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by the managing personal behavior or relationships or interactions between people of managing human resources by advising one to select someone based on his skills profile as it matches activities needed, without significantly more. We are not persuaded by Appellant’s argument that “the claims recite specific features such as training a machine learning algorithm to identify skills associated with a service request (or an activity thereof), such that the claims incorporate the alleged abstract ideas into a practical application.” Id. Again, this is a recitation of a conceptual idea rather than of technological implementation details. Appeal 2021-002878 Application 15/722,733 22 We are not persuaded by Appellant’s argument that “the claims recite specific features such as training a machine learning algorithm to identify skills associated with a service request (or an activity thereof), such that the claims incorporate the alleged abstract ideas into a practical application.” Id. Again, this is a recitation of a conceptual idea rather than of technological implementation details. We are not persuaded by Appellant's argument that the Examiner has failed to take independent claims 8 and 14 as a whole when identifying practical applications, and submits that a system/method striving for the benefits of quick, efficient, and effective training of a machine learning algorithm to identify skills associated with a service request, identifying the skills associated with a service request, and efficiently and effectively assigning the service request to a profile having the skills associated with a service request has apparent and significant practical application. Id. The analysis above takes the independent claims as a whole and as parts. Simply providing a quick, efficient, and effective machine is conventional automation. The steps in Versata’s claims (e.g., arranging, storing, retrieving, sorting, eliminating, determining) are conventional, routine, and well-known. They involve the normal, basic functions of a computer. “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.” SiRF Tech., Inc. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed Cir. 2010); see also Bancorp, 687 F.3d at 1277-78. Versata’s claims do not meet this test, and instead function solely as a mechanism for permitting the price determination to be performed more quickly. Appeal 2021-002878 Application 15/722,733 23 Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1335 (2015). Claims 8-20 rejected under 35 U.S.C. § 102(a)(1) as anticipated by Elenbaas We are persuaded by Appellant’s argument that “Elenbaas does not disclose a service request or a machine learning algorithm to identify skills associated with a service request or an activity thereof.” Appeal Br. 14. Elenbaas uses machine learning to identify independent variables, but does not further describe those variables. FF 03-07. In particular, Elenbaas does not describe skills as being one of those independent variables. Claims 1-3, 5-7, and 21 rejected under 35 U.S.C. § 103(a) as unpatentable over Elenbaas and Blassin We are persuaded by Appellant's argument that “Elenbaas and Blassin, alone or in hypothetical combination, do not teach or suggest training a machine learning algorithm to identify skills associated with a service request.” Appeal Br. 19. This is persuasive for the same reason as the anticipation rejection argument above. Appeal 2021-002878 Application 15/722,733 24 CONCLUSIONS OF LAW The rejection of claims 8-20 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more is proper. The rejection of claims 8-20 under 35 U.S.C. § 102(a)(1) as anticipated by Elenbaas is improper. The rejection of claims 1-3, 5-7, and 21 under 35 U.S.C. § 103(a) as unpatentable over Elenbaas and Blassin is improper. NEW GROUND OF REJECTION The following new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). Claims 1-3, 5-7, and 21 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. These claims had been similarly rejected under 35 U.S.C. § 101 until the Advisory Action mailed September 22, 2020. In that action, the Examiner only said that these claims are directed to a practical application, with no explanation. We are unable to discern a reason for distinguishing these claims that would render them patent eligible. Independent claim 1 is substantially similar to claim 8. The only limitation that appears slightly different is “generating training data based on the assignment of the service request and feedback corresponding to the service request.” But generating data is among the generic operations discussed in the analysis above. The recited feedback is a source of data rather than an operational step per se. As such this is insufficient to confer eligibility. See SAS Am. above. But even were feedback construed as a step, the use of feedback per se is itself generic and conventional, and part of the Appeal 2021-002878 Application 15/722,733 25 equivalent human learning process. Feedback is an essential pedagogic practice, as in the use of report cards. The recited generation of training data is implied in the claim 8 training limitation, so this does not represent a difference from claim 8. No technological implementation or application details are recited. These added limitations recite only the conceptual ideas of generating data and feedback. Thus, these claims are also rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more for reasons similar to those against claims 8-20 above. CONCLUSION The rejection of claims 8-20 is affirmed. The rejection of claims 1-3, 5-7, and 21 is reversed. Claims 1-3, 5-7, and 21 are newly rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. In summary: Claims Rejected 35 U.S.C. § Basis/Reference(s) Affirmed Reversed New Ground 8-20 101 Eligibility 8-20 8-20 102(a)(1) Elenbaas 8-20 1-3, 5-7, 21 103 Elenbaas Blassin 1-3, 5-7, 21 1-3, 5-7, 21 101 Eligibility 1-3, 5-7, 21 Overall Outcome 8-20 1-3, 5-7, 21 1-3, 5-7, 21 Our decision is not a final agency action. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of Appeal 2021-002878 Application 15/722,733 26 rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Appeal 2021-002878 Application 15/722,733 27 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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. § 1.136(a)(1)(iv) (2011). AFFIRMED IN PART 41.50(b)