AKTANA, INC.

Patent Trials and Appeals Board

Mar 27, 2020

13889283 - (D) (P.T.A.B. Mar. 27, 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.
13/889,283 05/07/2013 Clark BERNIER 45MR-219413 3670
133759 7590 03/27/2020
Sheppard Mullin Richter & Hampton LLP
650 Town Center Drive, 10th Floor
Costa Mesa, CA 92626
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
SheppardMullin_Pair@firsttofile.com
dmipdocketing@sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLARK BERNIER,
DEREK CHOY, WILLIAM HUNT, ROBERT WILLSON,
DAVID EHRLICH, and JOHN O’HOLLERAN
Appeal 2018-006833
Application 13/889,283
Technology Center 3600
Before ADAM J. PYONIN, MICHAEL J. ENGLE, and
SCOTT RAEVSKY, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3, 5–13, and 34–64, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Aktana,
Inc. Appeal Br. 2.
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TECHNOLOGY
The claims relate to “recommending activities to workers of a
company” based upon the “value” of those activities. Claim 1 is illustrative
and reproduced below:
1. A system for recommending activities to workers of a
company, the system comprising:
one or more physical processors programmed with
computer readable instructions which when,[2] executed, cause
the one or more physical processors to:
electronically store a set of sales activities as
potential sales activities to be performed by one or more
workers of a company, wherein the set of sales activities
is related to sale of products to customers;
determine, based on the set of sales activities, a first
sales activity and a second sales activity as potential sales
activities to be performed by a first worker of the
company, wherein the first sales activity comprises a sales
activity related to sale of a product to a first customer and
the second sales activity comprises a sales activity related
to sale of a product to a second customer;
determine first historical performance of at least a
previous execution of the first sales activity based at least
partially on feedback from a second worker of the
company about the previous execution of the first sales
activity and second historical performance of at least a
previous execution of the second sales activity based at
least partially on feedback from the second worker about
the previous execution of the second sales activity;
determine a first value associated with the first
worker performing the first sales activity based on the first
historical performance, the first value indicating a

2 Appellant and the Examiner may wish to consider whether this comma
should be moved to occur before the word “when.”
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likelihood of product sales associated with performance of
the first sales activity;
determine a second value associated with the first
worker performing the second sales activity based on the
second historical performance, the second value indicating
a likelihood of product sales associated with performance
of the second sales activity;
select the first sales activity as a recommended sales
activity for the first worker over at least the second sales
activity based on a comparison of the first value and the
second value; and
provide a recommendation of the first sales activity
based on the selection.
REJECTION ON APPEAL
Claims 1–3, 5–13, and 34–64 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter without significantly more.
Final Act. 2.3
ANALYSIS
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[l]aws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law,

3 The rejection for double patenting was withdrawn. Ans. 3; Final Act. 9.
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based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). A
court must be cognizant that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas” (Mayo, 566 U.S. at 71), and “describing the claims at . . . a high level
of abstraction and untethered from the language of the claims all but ensures
that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “we evaluate the
focus of the claimed advance over the prior art to determine if the character
of the claim as a whole, considered in light of the specification, is directed to
excluded subject matter.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
1084, 1092 (Fed. Cir. 2019) (quotation omitted). “The inquiry often is
whether the claims are directed to ‘a specific means or method’ for
improving technology or whether they are simply directed to an abstract
end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed.
Cir. 2017).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Supreme Court has “described step two of this analysis as a
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search for an ‘inventive concept’—i.e., an element or combination of
elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the ineligible concept itself.” Id. at
217–18 (quotation omitted).
In 2019, the U.S. Patent & Trademark Office published revised
guidance on the application of § 101. USPTO, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”);
USPTO, October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (“Oct. Update”). Under that guidance, we look to the following steps to
determine whether the claim recites the following items:
USPTO
Step Does the claim recite ___? MPEP §
1 A process, machine, manufacture, or composition of matter 2106.03
2A, Prong 1
Only limitations that do not comprise a judicial
exception, such as a law of nature or any of the
following groups of abstract ideas:
1) Mathematical concepts, such as
mathematical formulas;
2) Certain methods of organizing human
activity, such as a fundamental
economic practice; or
3) Mental processes, such as an observation
or evaluation performed in the human
mind.
2106.04
2A, Prong 2 Any additional limitations that integrate the judicial exception into a practical application
2106.05(a)–
(c), (e)–(h)
2B
Any additional limitations beyond the judicial
exception that, alone or in combination, were
not “well-understood, routine, conventional”
2106.05(d)
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See Guidance 52, 55, 56. Here, there is no dispute with respect to USPTO
Step 1, so we proceed to the remaining steps.
USPTO Step 2A, Prong 1
The Examiner determines that “the claims are directed to the abstract
idea of data collection and data analysis, specifically planning a schedule for
a worker based on scheduled events and suggested activities.” Ans. 7
(quotation omitted). “No actual tasks are completed by the claimed
invention, merely information concerning the tasks is selected, collected,
analyzed, and displayed.” Id. at 10.
Claim 1 recites instructions for the following actions:
. . . store a set of sales activities as potential sales
activities to be performed by one or more workers of a
company, wherein the set of sales activities is related to
sale of products to customers;
determine, based on the set of sales activities, a first
sales activity and a second sales activity as potential sales
activities to be performed by a first worker of the
company, wherein the first sales activity comprises a sales
activity related to sale of a product to a first customer and
the second sales activity comprises a sales activity related
to sale of a product to a second customer;
determine first historical performance of at least a
previous execution of the first sales activity based at least
partially on feedback from a second worker of the
company about the previous execution of the first sales
activity and second historical performance of at least a
previous execution of the second sales activity based at
least partially on feedback from the second worker about
the previous execution of the second sales activity;
determine a first value associated with the first
worker performing the first sales activity based on the first
historical performance, the first value indicating a
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likelihood of product sales associated with performance of
the first sales activity;
determine a second value associated with the first
worker performing the second sales activity based on the
second historical performance, the second value indicating
a likelihood of product sales associated with performance
of the second sales activity;
select the first sales activity as a recommended sales
activity for the first worker over at least the second sales
activity based on a comparison of the first value and the
second value; and
provide a recommendation of the first sales activity
based on the selection.
Here, “with the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.” Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
For example, under the broadest reasonable interpretation, the human mind
can mentally store information about potential activities, determine two
different potential activities, determine past results from those activities
(including based on past results from others), determine the expected value
of those activities, and select and recommend one of the activities based on
the expected values. As the Federal Circuit has held, “the practices of
collecting, analyzing, and displaying data, with nothing more, are practices
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.” FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1097–98 (Fed. Cir. 2016) (quotation omitted). Thus, “we
continue to treat analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
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processes within the abstract-idea category.” Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (quotation omitted).
Claim 1 therefore recites a mental process, which is an abstract idea.
Moreover, determining an expected value based upon historical
performance and selecting an activity based upon a comparison of expected
values are fundamental economic practices. For example, a car salesman
might prioritize a repeat customer that regularly buys an expensive car over
a new customer merely browsing inexpensive models because the expected
value of the former is higher. Appellant argues that the claims recite
additional limitations beyond a fundamental economic practice, but that is a
question for prong 2, not prong 1. See Appeal Br. 12–13; Reply Br. 6–7.
Thus, claim 1 recites a fundamental economic practice, which is an abstract
idea.
Independent claims 34 and 43 recite commensurate limitations and
therefore recite abstract ideas for the same reasons as claim 1.
In addition to the abstract ideas from the independent claims, the
dependent claims also recite further abstract ideas, such as processes that can
be performed mentally or on paper in claims 2 (“predict” and “determine”
locations), 3 (“determine” time), 5 (“predict” time and location, then
“determine” and “provide” time), 9 (“estimate” time), 9–12 (further
narrowing the “selecting” step from claim 1), 52 (“determine” a time and
“add . . . a scheduled activity to the schedule”), 53 (“access a calendar” and
“create a calendar entry”), and 59 (“access” a calendar and “update” the
calendar), as well as commensurate claims depending from independent
claims 34 and 43. Thus, the dependent claims also recite abstract ideas.
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USPTO Step 2A, Prong 2
Beyond the abstract ideas listed above, claim 1 recites “one or more
physical processors programmed with computer readable instructions
which[,] when[] executed, cause the one or more physical processors to”
perform the recited steps. In addition, the first recited step is to
“electronically” store certain information.
The Specification describes the “processor” as generic, such as the
processor of any computer. See, e.g., Spec. ¶¶ 271 (“processor 101 may
include one or more of a digital processor, an analog processor, a digital
circuit designed to process information, an analog circuit designed to process
information, a state machine, and/or other mechanisms for electronically
processing information”), 269 (“The computing device 100 may be any
computing device such as, for example, a server, a desktop computer, laptop
computer, personal digital assistant, smart phone, gaming console, and/or
any other computing device. Computing device 100 may include . . . one or
more processors 101 . . . .”), 276 (“The client computing device 30 may
include one or more physical processors . . . . By way of non-limiting
example, the client computing device 30 may include one or more of a
server, desktop computer, a laptop computer, a handheld computer, a tablet
computing platform, a NetBook, a Smartphone, a gaming console, and/or
other computing platforms.”).
The Specification likewise describes storing information
electronically using generic computer storage components. See, e.g., Spec.
¶¶ 273 (“The storage module 105 may include one or more of optically
readable storage media (e.g., optical disks, etc.), magnetically readable
storage media (e.g., magnetic tape, magnetic hard drive, floppy drive, etc.),
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electrical charge-based storage media (e.g., EEPROM, RAM, etc.), solid-
state storage media (e.g., flash drive, etc.), and/or other electronically
readable storage media.”; “The electronic storage media of storage module
105 may include one or both of system storage that is provided integrally
(i.e., substantially non-removable) with computing device 100 and/or
removable storage that is removably connectable to computing device 100
via, for example, a port (e.g., a USB port, a firewire port, etc.) or a drive
(e.g., a disk drive, etc.).”; “The storage module 105 may include one or more
virtual storage resources (e.g., cloud storage, a virtual private network,
and/or other virtual storage resources).”), 274 (“the one or more databases
comprising the storage module 105 may be, include, or interface to, for
example, an Oracle™ relational database sold commercially by Oracle
Corporation” or “[o]ther databases, such as Informix” or “DB2 (Database
2)”).
The Supreme Court has held that “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 573 U.S. at 222–23. This is because “[a]n
abstract idea on ‘an Internet computer network’ or on a generic computer is
still an abstract idea.” BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016).
Appellant argues that the claims are “rooted in computer technology”
and recite specific “technical” improvements. E.g., Appeal Br. 17, 11–12.
Yet many of the items identified by Appellant as technical do not appear in
any of the claims (e.g., “machine learning” or a “networked” computer
system) or appear only in dependent claims (e.g., “updating an electronic
calendar”). The Federal Circuit has explained that “features that are not
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claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis.” Am.
Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355, 1363 (Fed. Cir.
2019). Even for the dependent claims,4 many of the items mentioned by
Appellant are part of the recited abstract ideas (e.g., accessing and updating
a calendar, which can be performed mentally or with pen & paper), and the
Federal Circuit has held that “[t]he abstract idea itself cannot supply the
inventive concept, no matter how groundbreaking the advance.” Trading
Techs., 921 F.3d at 1093 (quotation omitted).
Some dependent claims, such as claims 52–55 and 59, recite a “user
device”; “electronically” accessing a calendar; or “automatically” updating a
calendar. But these are insufficient for the same reasons as the “processor”
and “electronically” storing discussed above. See also Spec. ¶ 79 (applying
system to “existing calendar management systems”). At best, the additional
limitations merely automate a previously manual process, and “mere
automation of manual processes using generic computers does not constitute
a patentable improvement in computer technology.” Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
In sum, whether considered individually or in an ordered combination,
the additional limitations beyond the abstract idea do not improve the
functioning of a computer and are not tied to any particular machine.

4 We note that Appellant argues the claims collectively under the same
headings, often without identifying which specific dependent claims a given
argument applies to. See, e.g., Appeal Br. 9, 11–12, 22–24. By regulation,
“any claim(s) argued separately or as a subgroup shall be argued under a
separate subheading that identifies the claim(s) by number.” 37 C.F.R.
§ 41.37(c)(1)(iv). In the future, Appellant should use appropriate
subheadings and specifically identify the relevant dependent claims.
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Moreover, even if we were to consider limitations such as “sales” activities,
“workers of a company,” and “sale of products to customers” as additional
limitations under prong 2 rather than part of the abstract idea under prong 1,
these would still be no more than mere field of use limitations. See Bilski v.
Kappos, 561 U.S. 593, 612 (2010) (“limiting an abstract idea to one field of
use” does “not make the concept patentable”); MPEP § 2106.05(h).
Therefore, the claims do not integrate the abstract idea into a practical
application.
USPTO Step 2B
The Specification discloses the computer and its “processor” were
generic and well-understood, routine, and conventional. See, e.g., Spec.
¶¶ 271, 269, 276. The Specification likewise describes storing
electronically, including in databases, and electronic calendars as well-
understood, routine, and conventional. See, e.g., id. ¶¶ 273–74 (storing), 79
(“The functionality of the system may be compatible with existing systems,”
such as “existing calendar management systems”), 181 (similar). Therefore,
whether considered as individual limitations or as a whole, the claims do not
recite significantly more than the abstract idea.
Accordingly, we sustain the Examiner’s rejection of claims 1–3, 5–13,
and 34–64.
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DECISION
The following table summarizes the outcome of each rejection:
Claims Rejected Statute Basis Affirmed Reversed
1–3, 5–13, 34–64 § 101 Eligibility 1–3, 5–13, 34–64
TIME TO RESPOND
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.36(a)(1)(iv).
AFFIRMED