XEROX CORPORATION

Patent Trials and Appeals Board

Jun 2, 2020

2019005278 (P.T.A.B. Jun. 2, 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.
13/836,233 03/15/2013 LEI LI 20120941-US-NP 9870
144887 7590 06/02/2020
Tong, Rea, Bentley & Kim, LLC/Conduent
12 Christopher Way
Suite 105
Eatontown, NJ 07724
EXAMINER
PRATT, EHRIN LARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
Conduent.PatentDocketing@Conduent.com
docketing@trbklaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEI LI, WEI PENG,
SAURABH KATARIA, and TONG SUN

Appeal 2019-005278
Application 13/836,233
Technology Center 3600

Before CARL W. WHITEHEAD JR, DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–8, 10–12, 14–17, 19, and 20.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Conduent
Business Services, LLC.” Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s Invention
According to Appellant, “[t]he present [invention] relates generally to
customer relationship management (CRM) using social media and, more
particularly, to a method and an apparatus for recommending topic-cohesive
and interactive implicit communities in social CRM.” Spec. ¶ 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A method for posting a reply that includes a
recommended topic-cohesive and interactive implicit
community on a social media website, comprising:
generating, by a processor, a plurality of implicit communities
using a bipartite graph K(V,U,F) of a soft clustering algorithm,
where V = {vi}ni = 1 contains all the data objects, U = {up}
m
p = 1
contains all the clusters, and F contains all the conditional
probabilities that vi belongs to up;
identifying, by the processor, one or more topics associated
with each one of the plurality of implicit communities, wherein
each one of the plurality of implicit communities is identified
from a plurality of individual users of a plurality of different
social media websites accessed via the Internet;
receiving, by the processor, a request for customer care at a
customer relationship management service provider, wherein
the request is received by detecting a message on the social
media website;
calculating, by the processor, a relevance score as a function of
a topic associated with the request for customer care for each
one of the plurality of implicit communities based upon a
respective topic of the one or more topics associated with each
one of the plurality of implicit communities identified using a
combined community and user topic generative model, wherein
the combined community and user topic generative model
selects a word for the one or more topics used to calculate the
relevance score by implementing a Gibbs sampling method on
the combined community and user topic generative model that
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comprises probabilistic dependencies of all variables related to
the one or more topics in an implicit community set inside of all
variables related to a user set and all variables related to each
topic discussed in the social media website;
calculating, by the processor, an influence factor for each one of
the plurality of implicit communities, wherein the influence
factor is a function of a number of interactions of a customer
with each member of a respective one of the plurality of
implicit communities and a friend of the customer in one or
more of the plurality of different social media websites;
selecting, by the processor, an implicit community of the
plurality of implicit communities based upon the relevance
score and the influence factor, wherein the implicit community
includes the friend of the customer in the one or more of the
plurality of different social media websites; and
posting, by the processor, a reply to the request for customer
care on the social media website that the request was detected
to help resolve a customer issue, wherein the reply includes the
implicit community that is selected.
Appeal Br., Claims Appendix.
Rejection
Claims 1–3, 5–8, 10–12, 14–17, 19, and 20 stand rejected under
35 U.S.C. § 101 as being directed to a judicial exception. Ans. 3–9;
Final Act. 2–7.
OPINION
We are persuaded of error in the rejection of claims 1–3, 5–8, 10–12,
14–17, 19, and 20 under 35 U.S.C. § 101 as being directed to a judicial
exception. Accordingly, the rejection is not sustained.
We address the rejection with respect to claim 1, reproduced above.
Our analysis applies to each of claims 1–3, 5–8, 10–12, 14–17, 19, and 20.
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Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217−18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75−77 (2012)). In accordance
with that framework, we first determine what concept the claim is “directed
to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219−20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594−95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden,
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56 U.S. 252, 267−68 (1853))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
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PTO Guidance
The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”).2 Under the Guidance, we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, and mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) § 2106.05(a)−(c), (e)−(h) (9th ed. 2018)).
84 Fed. Reg. at 52−55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
conclude the claim is directed to a judicial exception (id. at 54) and look to
whether the claim:

2 The Examiner’s Answer, but not the Final Action, was mailed after the
Guidance’s publication. Because the Guidance revises examination for
patent-eligibility (84 Fed. Reg. at 50) and the Answer changes the rejection
per the Guidance (Ans. 3–9; compare Final Act. 2–7), we take the Answer
as presenting the rejection and as incorporating only the Final Action’s
statements that are material under the Guidance. See also 37 C.F.R.
§ 41.39(a)(1) (“An examiner’s answer is deemed to incorporate all of the
grounds of rejection set forth in the Office action from which the appeal is
taken.”).
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Id. at 56.
ANALYSIS
Though the Examiner reasonably characterized a bipartite graph as a
“mathematical concept” (Ans. 5) and generic use of a processor and Internet
as a mere “computer environment” (id. at 8), the Examiner summarized all
remaining claim features as “an ‘idea of itself’ type abstract idea [(]because
they describe steps of posting a reply to a request for customer care[)]” and
as “managing personal behavior or relationships or interactions between
people.” Id. at 6–7. The Examiner also found that all claim features solved
a “business challenge”—namely “a problem of creating implicit
communities associated with a topic . . . to address a customer care request.”
Id. at 9. We disagree with the Examiner’s findings.
Appellant identifies error in the following reply to the Examiner’s
above findings:
[T]he Examiner . . . overgeneralizes the claims[.]
. . . .
The claims provide a unique way of creating implicit
communities from users across different social media websites
and using the implicit communities to a customer care request
via a social media website. . . . Moreover, the claims recite
limitations that provide specifics as to how the implicit
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communities are created and do not recite limitations that
broadly generalize the concepts of implicit communities.
Reply Br. 2–3. In the Appeal Brief, Appellant contends “the claims specify
a way that the implicit communities are created and a way that a particular
implicit community is selected for a customer care request.” Appeal Br. 15.
We agree with Appellant.
The Examiner should have addressed with greater particularity the
following claim features. First, data objects, clusters, and probabilities of
data objects belonging to clusters are input to a bipartite graph to determine
communities; e.g., the bipartite graph clusters Facebook® users into
communities based on their “follow” activities (Spec. ¶¶ 27–28, 36–37).
Second, the customer request and each community are ascribed topics, e.g.,
from the request and the Facebook® posts of each determined community’s
members (id. ¶ 30). Third, the customer request is ascribed a relevance
score, for each community, based on a combined community and user topic
model, e.g., by correlating the topics ascribed to the request, community, and
individual members thereof (id. ¶¶ 30–32, 40). Fourth, the customer is
ascribed an influence factor, for each community, based on the customer’s
interactions with each community member and a friend, e.g., based on the
customer’s quantity of interactions with a community’s members and a
friend’s inclusion in the community (id. ¶ 57). Fifth, the request is ascribed
a community based on the relevance score and influence factor.
We find that the Examiner should have discussed in more detail how
these elements solved a business challenge.. Additionally, the Examiner
should have discussed whether these elements could be characterized as
judicial exceptions. The Examiner should have provided more explanation
as to how the Guidance’s listed methods of organizing human activity
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include the aforesaid specific steps that result in assigning a customer
request to a community. See October 2019 Patent Eligibility Guidance
Update at 16 (Prima facie showing for Step 2A(1) is reached by identifying
judicial exceptions described by the Guidance, mapping the specific claim
limitations corresponding to each exception, and explaining why the specific
limitations fall within the exceptions.),3 available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf; see also
84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the Guidance
Update).
Additionally, the Examiner should have addressed the specifics of
claim 1 as pertinent to the Guidance’s “practical application” considerations
under Step 2A(2).4 We explain why with reference to McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), which addresses a

3 “However, if possible, the examiner should consider the limitations
together to be an abstract idea for Step 2A Prong Two and Step 2B (if
necessary) rather than a plurality of separate abstract ideas to be analyzed
individually.” Guidance Update at 2.
4 The Guidance separates the enumerated issues (1) to (4) (see supra 6–7)
into the following Steps 2A(1), 2A(2), and 2B:
[T]he revised procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first step
of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the
claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application.
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018. [footnote omitted].
84 Fed. Reg. at 51.
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patent-eligible software implementation of an abstract idea (id. at 1307,
1316).
Equating an abstract idea to a “result,” McRO held the claim
patent-eligible because it recites a “means” sufficiently specific to prevent
preemption. Id. at 1314. McRO explains:
The preemption concern arises when the claims are not directed
to a specific invention and instead . . . abstractly cover results
where it matters not by what process or machinery the result is
accomplished. . . . We therefore look to whether the claims in
these patents focus on a specific means or method that
improves the relevant technology[.]
Id. (quotation marks and citations omitted). In holding the claim overcame
the above preemption “concern underlying the exceptions to § 101” (id. at
1315), McRO identified a claimed “set of rules” that applied unconventional
data—particularly a keyframe at a point that no phoneme is being
pronounced, i.e., at a “phoneme sub-sequence”—to the abstract idea of using
of morph weights to lip synchronize animation (thereby preventing
preemption). Id. at 1306–07 (comparison of morph weighting and
invention’s specific morph weighting), 1311 (claim interpretation
emphasizing phoneme sub-sequences), 1314–15 (analysis emphasizing
appointment of keyframes to phoneme sub sequences).
With respect to this case, McRO indicates that a
computer-implemented method’s inputs and rules (e.g., the McRO
invention’s use of a phoneme sub-sequence) for a judicial exception (e.g., to
achieve the McRO invention’s abstract result of morph-weighting) cannot be
summarily dismissed as merely narrowing the exception. Rather, the inputs
and rules should be considered for their specificity and, particularly, for
whether they “prevent broad preemption of all rules-based means” (id.
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at 1315) for implementing the judicial exception. This end is achieved by
showing—i.e., explaining why—the specific inputs and rules are either part
of the exception itself or do not prevent its preemption. Because the
Examiner has not provided sufficient explanation, we cannot sustain the
rejection.
CONCLUSION
We reverse the Examiner’s decision to reject claims 1–3, 5–8, 10–12,
14–17, 19, and 20.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 5–8, 10–
12, 14–17, 19,
20
§ 101 Eligibility 1–3, 5–8, 10–
12, 14–17,
19, 20

REVERSED