[24]7.ai, Inc.

Patent Trials and Appeals Board

Sep 9, 2020

2020002086 (P.T.A.B. Sep. 9, 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.
13/926,988 06/25/2013 Dinesh AJMERA 110524-8018.US02 3661
22918 7590 09/09/2020
PERKINS COIE LLP - PAO General
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
BAHL, SANGEETA
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/09/2020 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DINESH AJMERA, DEBASHISH PANDA,
PANKAJ GHANSHANI, SUMIT KUMAR, RAVI VIJAYARAGHAVAN,
and MATHANGI SRI RAMACHANDRAN
____________

Appeal 2020-002086
Application 13/926,988
Technology Center 3600
____________

Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejections of claims 1–4,
6–8, 10–14, 22, and 23 under 35 U.S.C. § 101 (Rejection I) and 35 U.S.C
§ 103 (Rejection II). We do not sustain either of these rejections, and, thus,
we REVERSE.2

1 The Appellant is the “applicant” (e.g., “the inventor or all of the joint
inventors”) as defined in 37 C.F.R. § 1.42. The Appellant identifies the real
party in interest as “[24 ]7.ai, Inc.” (Appeal Br. 3.)
2 We have jurisdiction over this appeal under 35 U.S.C. § 134 and
35 U.S.C. § 6(b).
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BACKGROUND
The Appellant’s invention “relates to customer/agent interaction” in a
“customer service” (e.g., call center) setting. (Spec. 1, ll. 16–18.) “[T]he
quality of service provided to a customer” in this setting “directly affects the
relationship between the customer and a merchant.” (Id. at 2, ll. 4–5.) As
such, a commercial objective of a call center is “to provide prompt and
helpful answers to customer questions.” (Id. at 2, ll. 6–7.) Needless to say,
this commercial objective can be achieved by “predict[ing] a best response
to future customer queries.” (Id. at 3, ll. 1–2.)
The Appellant affords a “predictive service platform,” which furthers
this commercial objective by “building and provisioning real time
interaction management solutions over [a network].” (Spec. 8, ll. 30–32.)
In a nutshell, the Appellant’s predictive service platform collects (i.e.,
captures) historical information about a customer, generates a prediction
model based on this collected information, and then uses the model to
predict (and thus provide) a best response to the customer’s future queries.
(See Spec. 6, ll. 10–20.) The customer’s historical information is
representative of the customer’s previous commercial interactions with a
relevant website, which the Appellant calls the customer’s “journey.” (Id.
at 6, l. 27.)
The Appellant’s predictive service platform includes a “client side”
(e.g., a customer side) and a “server side” (e.g., a call-center side) which
communicate via a network. (Spec. 5, ll. 28–30, see also id. at Figs. 1, 2.)
A client-side processor collects (“captures”) information about the
customer’s “journey,” and a client-side memory, and more particularly a
“persistent local storage,” stores this collected information. (See id. at 7,
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ll. 5–2, see also id. at Figs. 1, 2.) The client-side processor sends the stored
information (i.e., the collected information stored in the “persistent local
storage”) over a network to a server-side processor. (See id.) The stored
information received by the server-side processor facilitates generation of a
predictive model, and, more particularly, “a finite state machine consisting
of distinct states and conditional transitions between them.” (Id. at 9,
ll. 1–4.)
Thus, the Appellant’s invention “takes advantage of the persistent
local storage” on the client side of the platform “to keep track of all the
information throughout the [customer’s] journey.” (Spec. 9, ll. 22–24, see
also id. at 18, ll. 27–29.) According to the Appellant, this client-side storage
location of the collected information makes the server “stateless.” (See id.)
And, according to the Appellant, making the server “stateless” provides
“maximum scalability and availability.” (Id. at 9, l. 27.)
INDEPENDENT CLAIMS ON APPEAL
(with our annotations)
1. An apparatus for event-driven, customizable action
execution to facilitate contextual interactions, comprising:
a processor and a memory configured as part of a
predictive service platform for building and provisioning real
time interaction management solutions over a network;
said processor configured to capture information
representative of a user’s journey across said network, said
journey representing said user’s interactions with a website
window of a browser associated with said network including
any of data accessed on said website, actions performed on said
website and time on pages of the website;
said memory configured as a persistent local storage of
said browser to store said information of said journey such that
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said information stored in said memory is capable of being
shared locally across a plurality of windows of said browser;
said processor configured to send updates of said stored
information over a network to a server during non-persistent
interactions to facilitate generation of a model of said journey
as a finite state machine including distinct states and
conditional transitions thereby making said server stateless,
said model representing said user’s interactions with the
website, a chat transcript representing the user’s prior
interaction with the predictive service platform, and customer
relationship management (CRM) records associated with said
user, the model being a hierarchical category model generated
using a machine learning algorithm;
said processor configured to predict an issue of the user
having a highest probability score identified in the model
representing said user’s interactions with the website, the chat
transcript representing the user’s prior interaction with the
predictive service platform, and the CRM records associated
with said user; and
said processor performing a specific action correlating to
the issue of the user as predicted using the model, the specific
action causing a state transition or display of an interface
representing an interaction opportunity to resolve said issue of
said user.

10. An apparatus for event-driven, customizable action
execution to facilitate contextual interactions, comprising:
a processor and a memory configured as part of a
predictive service platform for building and provisioning real
time interaction management solutions over a network;
said processor configured to capture information stored
in a persistent local storage of a client device, said stored
information representative of a user’s journey across said
network, said journey representing said user’s interactions with
a website window of a browser associated with said network
including any of data accessed on said website, actions
performed on said website, and time on pages of the website;
said processor configured to receive updates of said
stored information over a network from said client device
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during non-persistent interactions to facilitate generation of a
model of said journey as a finite state machine including
distinct states and conditional transitions thereby making
said apparatus stateless, said model representing said user’s
interactions with the website, a chat transcript representing the
user’s prior interaction with the predictive service platform, and
customer relationship management (CRM) records associated
with said user, the model generated using a machine learning
algorithm;
said processor configured to predict an issue of the user
having a highest probability score identified in the model
representing said user's interactions with the website, the chat
transcript representing the user’s prior interaction with the
predictive service platform, and the CRM records associated
with said user; and
said processor causing the client device to perform a
specific action correlating to said issue of the user as predicted
using the model, the specific action including a state transition
or display of an interface representing interaction opportunities
to resolve said issue of said user during a lifecycle of said
journey responsive to captured information.

REJECTION I
The Examiner rejects claims 1–4, 6–8, 10–14, 22, and 23 under
35 U.S.C. § 101 as directed to a judicial exception (i.e., an abstract idea)
without significantly more. (Final Act. 2.) In other words, the Examiner
concludes that the claims on appeal do not pass muster under the Alice
framework for patent eligibility. We do not sustain this rejection.
The Alice Framework
In Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), the
Supreme Court provided a two-step framework to guard against an attempt to
patent an abstract idea. (Id. at 217–18.) In Alice step one, a determination is
made as to whether the claim at issue is “directed to” an abstract idea. (Id.
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at 218.) If the claim at issue is “directed to” an abstract idea, the second step
of the Alice framework must be performed. In Alice step two, a determination
is made as to whether additional elements in the claim “amount[] to
significantly more” than the abstract idea itself. (Id.)
Consequently, a conclusion that a claim does not pass muster under
the Alice framework is premised upon a determination that the claim is
“directed to” an abstract idea. Thus, if a claim is “not directed to an abstract
idea under step one of the Alice framework, we do not need to proceed to
step two.” (Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
2016).) More succinctly, “we stop at step one.” (Id.)
The 2019 § 101 Guidance
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides a two-pronged step (Step 2A) for analyzing
whether a claim is “directed to” an abstract idea so as to satisfy Alice step
one. (See Federal Register, Vol. 84, No. 4, 50, January 19, 2019.)
In the first prong of Step 2A (Prong One), it is determined whether
the claim recites an abstract idea. (Id. at 50.) The Guidance “extracts and
synthesizes key concepts identified by the courts as abstract ideas,” and
these concepts include “[c]ertain methods of organizing human activity,”
and, more particularly, “commercial or legal interactions.” (Id. at 52.)
If the claim recites an abstract idea under Prong One of Step 2A, this
does not necessarily mean that the claim is “directed to” the recited abstract
idea. (See 2019 § 101 Guidance, 84 Fed. Reg. at 50.) Rather, “the claim
requires further analysis” in the second prong (Prong Two) of Step 2A. (Id.
at 54.)
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In Prong Two, it is determined “whether the judicial exception is
integrated into a practical application of the judicial exception.” (2019 § 101
Guidance, 84 Fed. Reg. at 50.) This determination requires an identification
of “additional elements in the claim beyond the abstract idea.” (Id. at 54.)
The identified additional elements are then evaluated, “individually and in
combination, to determine whether they integrate the exception into a
practical application.” (Id. at 55.)3 “If the recited exception is integrated
into a practical application of the exception, then the claim is eligible at
Prong Two” and “[t]his concludes the eligibility analysis.” (Id. at 54.)
Thus, to sufficiently support a determination that a claim is “directed
to” a recited abstract idea so as to satisfy Alice step one, the record must
contain an adequate explanation as to why the claim’s additional elements
do not integrate a recited abstract idea into a practical application.
Analysis
The Examiner’s conclusion that independent claims 1 and 10 do not
pass muster under the Alice framework is premised upon them being
“directed to” an abstract idea. (See Final Act. 2.) According to the
Examiner, this premise was reached by applying the 2019 § 101 Guidance,
and particularly Prong One and Prong Two of Step 2A. (See Advisory
Act. 2.)4

3 “A claim that integrates a judicial exception into a practical application
will apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” (Id. at 54.)
4 The Final Office Action was mailed (January 10, 2019) prior to the 2019
§ 101 Guidance (January 19, 2019). (See Ans. 4.) An Advisory Action
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Applying Prong One of Step 2A of the Guidance, the Examiner
determines that independent claims 1 and 10 “recite[] an abstract idea,”
which is a “certain method[] of organizing human activity.” (Advisory
Act. 2, see also Ans. 4.)
As indicated above, a commercial interaction is a certain method of
organizing human activity that constitutes an abstract idea. Independent
claims 1 and 10 recite limitations corresponding to the commercial
interaction that occurs between a customer and a call center, and the desire
for this commercial interaction to go smoothly. (See Appeal Br., Claims
App.) For example, the information captured, stored, sent, and received
corresponds to the customer’s prior commercial interactions with the call
center, the model corresponds to these commercial interactions, the
prediction made corresponds to a future commercial interaction, and the
action taken (or caused) corresponds to the call center’s resolution of this
future commercial interaction.
Applying Prong Two of Step 2A of the Guidance, the Examiner
determines that the recited abstract idea “is not integrated into a practical
application.” (Ans. 2, see also Advisory Act. 2.)
The Examiner identifies a processor (i.e., either a client-side
processor or a server-side processor), a memory (i.e., a client-side local
persistent storage), and a server as the additional elements recited in
independent claims 1 and 10. (See Final Act. 3–6.) And the Examiner
characterizes these additional elements as a “recitation of generic computer

was subsequently mailed (May 24, 2019) which was “based on updated
guidance.” (Id., see also Advisory Act. 2.)
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structure” which serves “to perform generic computer functions” that
“would be routine in any computer implementation.” (Id. at 3.)5
The Appellant argues that the Examiner’s characterization of the
contribution of the claims’ additional elements rests on faulty footing. (See
Appeal Br. 9, 10, 12, 13, 15.) More specifically, the Appellant contends
that the Examiner’s additional-elements analysis is incomplete because it
“over-generalizes the invention in terms of simple concepts rather than
considering what claims 1 and 10 require.” (Id. at 15.) We are persuaded
by the Appellant’s position.
Independent claim 1 does not merely recite a memory that stores
information, claim 1 specifies that the memory must be configured as a
persistent local storage of said browser. (Appeal Br., Claims App.)
Independent claim 10 correspondingly requires the server to be configured
to capture information stored in a persistent local storage of a client
device. (Id.) Additionally, claims 1 and 10 require stored information (i.e.,
information stored in the client-side persistent local storage) to be
transmitted to the server over the network. (Id.) Further, independent
claims 1 and 10 do not merely require a server, they require a stateless

5 According to the Examiner, “[t]he limitations of processors, memory,
server and computer readable medium merely add the words ‘apply it’ (or
an equivalent) with the judicial exception, or mere instructions to
implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea.” (Ans. 5.) The Examiner also talks about
how “[c]ollecting” information, “obtaining” information, “analyzing”
information, “displaying” information, and “manipulating information
through mathematical correlations” are “abstract ideas.” (Id.)
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server. (Id.) Still further, claims 1 and 10 specify a finite state machine
including distinct states and conditional transactions. (Id.)
As summarized in the Reply Brief, the Appellant argues that
Examiner “disregard[s]” the above-listed limitations which are “expressly
recited in the claims.” (Reply Br. 3.) And, according to the Appellant, these
disregarded limitations, in combination with the rest of the limitations
recited in independent claims 1 and 10, result in the claimed invention being
“directed to making an improvement in the computer’s functionality.”
(Appeal Br. 10.)
When “[a]n additional element reflects an improvement in the
functioning of a computer” this is “indicative” that the additional element
“may have integrated the exception into a practical application.” (2019
§ 101 Guidance, Federal Register Vol. 84, No. 4, at 55.) Also, it can be “the
combination of elements that provide the practical application.” (Id.)
Indeed, it is possible for an inventive concept to reside in “the non-
conventional and non-generic arrangement of known, conventional pieces,”
such as “a set of generic computer components.” (BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).)
Significantly, here, the Appellant does not just aver that its invention
is directed to an improvement in computer technology, the Appellant
provides “detailed reasoning” on why this is so. (Reply Br. 5.) The
Appellant identifies a technical problem, describes its technical solution to
this problem, and specifies the role played by the claimed limitations in
achieving this solution. (See Appeal Br. 9–17.)
The Appellant identifies the technical problem addressed by its
invention as the “inefficient use of network resources” in a client-server
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system. (Appeal Br. 16.). The Appellant explains that this problem persists
because “storing web-journey information on the server side of a system
limits the scalability and availability of a client-server syste[m] for
generating model[s] of user web journeys as finite state machines.” (Reply
Br. 6; see also Appeal Br. 17.)
The Appellant describes its solution to this problem as one rooted in
the “architecture recited in the pending claims.” (Appeal Br. 15–16.) The
Appellant explains that this claimed architecture (i.e., “a specific
arrangement and configuration of the components”) “utiliz[es] client-side
persistent local storage for keeping track of web-journey information to
make the server stateless, so that the server can provide maximum scalability
and availability.” (Reply Br. 6.) Thus, the Appellant specifies how the
above-listed limitations disregarded by the Examiner are “integral” to this
technical solution. (Id. at 3; see also Appeal Br. 9.)
The trouble with the Examiner’s rejection is that there is no rebuttal to
the Appellant’s “detailed reasoning” as to why its invention is directed to an
improvement in computer technology. (Reply Br. 5.) The Examiner’s
failure to focus on the above-listed limitations during the Prong-Two
analysis, calls into question whether the Examiner took these individual
limitations “into account.” (Id. at 3.) Additionally, the Examiner does not
acknowledge, much less “analyze the [alleged] technical problem and the
solution in the instant case.” (Id.)
Instead, “[r]egarding improvement in the computer’s functionality
argument,” the Examiner maintains that the Appellant “does not specifically
point out which limitation provides [the] improvement.” (Ans. 7.) But the
Appellant specifically, and repeatedly, refers to the above-listed limitations
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in the Appeal Brief. (See Appeal Br. 7, 9, 10, 12, 13, 16.) Additionally, the
Appellant straightforwardly says that its “specific improvement in the
capabilities of computing devices” is “making a server of a client-server
system completely stateless by using persistent local stor[age] of a browser
to keep track of information throughout a user’s journey on webpages.” (Id.
at 12.)
Also, “[r]egarding improvement in the computer’s functionality
argument,” the Examiner maintains that using a “generic processor” to
“collect and transmit user journey data does not constitute an improvement
to computer functionality.” (Ans. 7.) The Examiner additionally maintains
that “in the instant case, a generic processor is used for receiving/collecting
data.” (Id.) Yet the Examiner does not mention the above-listed
limitations when discussing this purported genericness. (See Final
Act. 3–7, Ans. 5–7.) The Examiner does not, for example, discuss the
client-side storage location, the finite state of the model, and/or the
statelessness of the server.
The Examiner maintains that the Specification “does not disclos[e]
how a specific improvement is achieved.” (Ans. 7.) But the Specification
expressly discloses that “[t]he invention takes advantage of the persistent
local storage on the browser to keep track of all the information throughout
the user’s journey, thereby making the server stateless.” (Spec. 9,
ll. 22–24; see also id. at 18, ll. 27–29.) The Specification also expressly
discloses that making the server stateless achieves “maximum scalability
and availability.” (Id. at 9, ll. 26–27.)
Moreover, per the 2019 § 101 Guidance, “[i]t is critical that examiners
consider the claim as a whole when evaluating whether the judicial
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exception is meaningfully limited by integration into a practical application
of the exception.” (2019 § 101 Guidance, 84 Fed. Reg. at 55.) Here, this
would seem to be especially important, as the Appellant argues that the
claim limitations “in their entirety represent the improvement.” (Reply
Br. 3; see also Appeal Br. 9.) But the Examiner gives no indication that the
claimed “arrangement and configuration of components” (Reply Br. 5) was
given the consideration it deserves during the Prong-Two analysis.
Consequently, the record does not contain an adequate explanation as
to why the additional elements in independent claims 1 and 10 fail to
integrate a recited abstract idea into a practical application. The Examiner,
therefore, falls short of establishing that claims 1 and 10 are “directed to” an
abstract idea so as to satisfy Alice step one.
Thus, on the record before us, we cannot sustain the Examiner’s
rejection of independent claims 1 and 10, and the claims depending
therefrom, under 35 U.S.C. § 101.
REJECTION II
The Examiner rejects claims 1–4, 6–8, 10–14, 22, and 23 under 35
U.S.C. § 103 as unpatentable over Cohen,6 Byrd,7 and Kalavar.8 (See Final
Act. 8.) We do not sustain this rejection.
Obviousness
“Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning

6 US 7,673,340 B1, issued March 2, 2010.
7 US 8,370,155 B2, issued February 5, 2013.
8 US 8,238,541 B1, issued August 7, 2012.
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with some rational underpinning to support the legal conclusion of
obviousness.” (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).)
For example, “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” (Id. at 416.) But a proposed combination of the prior art “even if
supported by a motivation to combine,” must include “all limitations of the
claim.” (CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003).)
Thus, when a rejection is premised upon a claimed invention being
obvious over a proposed combination of prior art, the record must contain an
adequate explanation as to why the proposed combination of the prior art
possesses all limitations in the claim.
Analysis
The Examiner’s obviousness rejection of independent claims 1 and 10
is premised upon a proposed combination of prior art (Cohen, Byrd,
Kalavar) possessing all limitations in these claims. (See Final Act. 8–13.)
Independent claims 1 and 10 require a “processor” configured to
capture a user’s journey information, a “persistent local storage” storing
captured journey information, and a “server” to “facilitate generation of a
model of said journey as a finite state machine.” (Appeal Br., Claims App.)
In the proposed combination of the prior art, the Examiner relies upon
Cohen to disclose the processor, the persistent local storage, and the server.
(See Final Act. 8–11, 13.)
Cohen discloses a computing environment 100 in which users’
communication devices 106 communicate with a service center 130 (i.e., its
computer system 133) via a network 103; and a monitoring device 150
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communicates with the service center’s system 133 via a network 109. (See
Cohen 6:39–41, Fig. 1B.) Cohen’s monitoring device 150 analyzes
“interaction” of users with the service center 130, reports on “the behavior of
the users,” and conveys how the service center’s computer system 133 “can
be improved.” (Cohen 7:8–13.) To that end, the monitoring device 150
includes a data management unit 306, a modeling unit 312, a logging
unit 318, and a sessions unit 330. (See id. at Fig. 3.)
The Examiner equates Cohen’s logging unit 318 to the claimed
processor configured to capture the journey information, equates a memory
in Cohen’s data management unit 306 (i.e., a non-volatile memory 414
and/or a data storage unit 1109) to the claimed persistent local storage, and
equates Cohen’s modeling unit 312 to the claimed server. (See Final
Act. 8–9.)
Independent claims 1 and 10 also require “a specific arrangement and
configuration” of these computer components. (Reply Br. 6.) More
particularly, claims 1 and 10 recite that the persistent local storage is a
client-side persistent local storage. (Appeal Br., Claims App.)9 And
claims 1 and 10 further recite that stored information (i.e., information
stored in the client-side persistent local storage) is sent to, or received by, the
server over a network. (Id.)10

9 In independent claim 1, a user’s journey “represent[s] said user’s
interaction with a website of a window of a browser,” and claim 1 requires
the persistent local storage to be of said browser. (Appeal Br., Claims
App.) Independent claim 10 requires the persistent local storage to be of a
client device. (Id.)
10 Independent claim 1 requires the processor to be “configured to send
updates of said stored information over a network to a server,” and
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In the proposed combination of the prior art, the Examiner relies upon
Cohen to disclose the claimed arrangement of the processor, the persistent
local storage, and the server. (See Final Act. 8–9.) Thus, according to the
Examiner, the journey information captured by Cohen’s logging unit 318 is
stored in a client-side persistent local storage. And, according to the
Examiner, this stored information is sent to, and received by, Cohen’s
modeling unit 312 over a network.
The Appellant argues that the Examiner does not sufficiently explain
why the proposed combination of the prior art would contain all of the
limitations set forth in independent claims 1 and 10. (Appeal Br. 16.)
Specifically, the Appellant contends that the Examiner “is mistaken” in
relying on Cohen to disclose the claimed arrangement of the processor, the
persistent local storage, and the server. (Id. at 18.) We are persuaded by the
Appellant’s position.
As pointed out by the Appellant, Cohen’s logging unit 318, Cohen’s
data management unit 306, and Cohen’s modeling unit 312 “all reside within
the same device,” namely Cohen’s monitoring device 150. (Appeal Br. 19;
see also Cohen, Fig. 3.) This begs the question of why a computer
component in Cohen’s monitoring device 150 (i.e., the alleged persistent
local storage 214/1109) would have a client-side location, while another
computer component in the Cohen’s monitoring device 150 (i.e., the
modeling unit 302) would have a server-side location. (See Appeal Br. 18.)

independent claim 10 requires the processor to be “configured to receive
updates of said stored information over a network from said client device.”
(Appeal Br., Claims App.)
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And the Examiner offers no explanation that addresses, much less answers,
this question.
Instead, the Examiner maintains that Cohen discloses that the logging
unit 318 also stores information about “usage of the subject system,” that a
state machine repository 406 can store information “related to a state
machine,” and that a session 803 involves “web browser cookies that store
user interaction/session data.” (See Answer 8.) However, like the persistent
storage 214/1109, the logging unit 318, the state machine repository 406
(which is part of the modeling unit 312), and the session 803 (which is part
of the sessions unit 330) all reside within Cohen’s monitoring device 150.
(See Cohen, Figs. 3, 4, 8.)
As also pointed out by the Appellant, the Examiner does not
adequately address how or why information stored in a computer memory
component in Cohen’s monitoring device 150 could or would be transmitted
over a network to a computer modeling component within the same
device 150. (Appeal Br. 19.) If the processor, the persistent local storage,
and the server all reside in Cohen’s monitoring device 150, this would seem
to render a network superfluous for communication therebetween. And the
Examiner offers no explanation as to why a network would be used for such
communication.
Instead, the Examiner maintains that information stored in Cohen’s
monitoring device 150 (i.e. information stored in the memory 214, the data
storage unit 1109, the state machine repository 406, and/or the session
repository 809) is “shared with” and/or “used by” other computer
components in Cohen’s monitoring device 150 (i.e., the modeling unit 312,
the logging unit 318, the session unit 330, and components thereof.)
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(Answer 9–10.) However, the Examiner does not maintain that this sharing
and/or utilizing involves information traveling over a network to another
computer component.
Consequently, the record does not contain an adequate explanation as
to why the proposed combination of the prior art would result in computer
components arranged in the claimed manner. The Examiner, therefore, falls
short of establishing that proposed combination of the prior art would
possess all of the limitations of independent claims 1 and 10.
Thus, on the record before us, we cannot sustain the Examiner’s
rejection of independent claims 1 and 10, and the claims depending
therefrom, under 35 U.S.C. § 103.
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–8,
10–14,
22, 23
103 Eligibility 1–4, 6–8,
10–14,
22, 23
1–4, 6–8,
10–14,
22, 23
103 Cohen, Byrd,
Kalavar
1–4, 6–8,
10–14,
22, 23
Overall
Outcome
1–4, 6–8,
10–14,
22, 23

REVERSED