Arvind Kulathu. Ramachandran et al.

Patent Trials and Appeals Board

Aug 14, 2019

13794785 - (D) (P.T.A.B. Aug. 14, 2019)

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.
13/794,785 03/11/2013 Arvind Kulathu RAMACHANDRAN QC122468 6627
12371 7590 08/14/2019
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
EXAMINER
RASHID, HARUNUR
ART UNIT PAPER NUMBER
2497
NOTIFICATION DATE DELIVERY MODE
08/14/2019 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ARVIND KULATHU RAMACHANDRAN,
SAURABH SENSHARMA, KHALED HELMI EL-MALEH,
SEYFULLAH H. OGUZ, AND R.V. JAGANNADHA RAO DODDI
____________________

Appeal 2018-002545
Application 13/794,7851
Technology Center 2400
____________________

Before MARC S. HOFF, JAMES W. DEJMEK, SCOTT B. HOWARD,
Administrative Patent Judges.

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–22, 31–52, 61–82, 91–112, and 121–149, which constitute all of
the claims pending in this application. Claims 23–30, 53–60, 83–90, and
113–120 have been cancelled. App. Br. 24, 28, 33, 38. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 QUALCOMM Incorporated (“Appellant”) is the Applicant under
37 C.F.R. § 1.46 and is identified as the real party in interest. App. Br. 3.
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THE INVENTION
The disclosed and claimed invention is directed to systems, methods,
and devices which “may enable a communication device to respond to a
caller based on an intent of the caller as determined by an intent engine and
the caller’s privilege level.” Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for responding to a call from a caller
placed to a communication device, comprising:
connecting the call to an intent engine in response to
determining that a user of the communication device is
unavailable;
determining an intent of the caller based on a
communication input from the caller using the intent engine,
wherein the communication input includes a text formatted
communication input, a location of the caller, sensor data from
one or more caller-associated devices, calendar information
associated with the caller, image data or video data, calendar
information from a calendar of the caller, or any combination
thereof;
determining a privilege level of the caller; and
selecting an action for responding to the call based on the
determined intent and the determined privilege level without
additional human involvement.

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Sugano US 6,205,478 B1 Mar. 20, 2001
Trandal US 2004/0114747 A1 June 17, 2004
Khouri US 2008/0151038 A1 June 26, 2008
Anantharaman US 2009/0059897 A1 Mar. 5, 2009
Kim US 2010/0062742 A1 Mar. 11, 2010
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REJECTIONS
Claim 1–22, 31–52, 61–82, 91–112, and 121–149 stand rejected under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final
Act. 8–11.
Claims 1–5, 7, 13–18, 21, 22, 31–35, 37, 43–48, 51, 52, 61–65, 67,
73–78, 81, 82, 91–95, 97, 103–108, 111, 112, 121–126, 129–134, 137–142,
and 145–149 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Trandal in view of Anantharaman and Sugano. Final
Act. 11–29.
Claims 6, 8–12, 36, 38–42, 66, 68–72, 96, and 98–102 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Trandal in
view of Anantharaman, Sugano, and Khouri. Final Act. 29–32.
Claims 19, 20, 49, 50, 79, 80, 109, 110, 127, 128, 135, 136, and 143,
and 144 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Trandal in view of Anantharaman, Sugano, and Kim.
Final Act. 32–33.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding the pending claims.
Section 101 Rejection
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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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).
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. Id. 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, 69 (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, 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))).
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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 176; 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 (quotation marks
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.
The PTO’s published revised guidance on the application of § 101.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
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Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that 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, or mental processes); and

(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
See Memorandum at 52, 55–56. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
(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.
See Memorandum at 56.
USPTO Step 2A, Prong 1
The Examiner determines that claim 1 is directed to an abstract idea
“that can be either performed as human activity or performed by a regular
computing device (i.e., comparing new and stored information and using
rules to identify options).” Final Act. 8–9; see also Ans. 4. More
specifically, the Examiner determines that “claim 1 of the instant application
compares input data (e.g., caller intent) and rules (e.g., caller privilege level)
which a telephone operator/office secretary does routinely.” Final Act. 9;
see also Ans. 4 (“[C]laim 1 is nothing but ordinary processes that can be
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either performed as human activity or performed by a regular computing
device (i.e., ‘comparing new and stored information and using rules to
identify options’ (Smartgene) and ‘collecting information, analyzing it, and
displaying certain results of the collection’ (Electric Power Group)).”).
According to the Examiner, the following limitations recite steps that can be
performed by the human mind: “connecting the call . . .”; “determining an
intent of the caller . . .”; “determining a privilege level . . .”; and “selecting
an action for responding . . .” Final Act. 8–9.
Appellant does not directly address the Examiner’s determination that
the claim recites steps that can be practically performed by a human mind.
Instead, Appellant’s argument focuses on whether the claim improves the
functioning of a computer itself. See App. Br. 9–12; Reply Br. 2.2
“If an appellant fails to present arguments on a particular issue — or,
more broadly, on a particular rejection — the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection.” Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Accordingly, we do not review the Examiner’s determination that the claim
recites an abstract idea. That said, we agree with the Examiner that
“determining an intent of the caller based on a communication input from
the caller . . . wherein the communication input includes a text formatted
communication input, a location of the caller, . . . calendar information
associated with the caller, image data or video data, calendar information
from a calendar of the caller, or any combination thereof”; “determining a
privilege level of the caller”; and “selecting an action for responding to the

2 Only page 1 of the Reply Brief is paginated. Our references to the page
number of the Reply Brief is based on that page number.
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call based on the determined intent and the determined privilege level . . .”
are all steps that can be practically performed in the human mind. That is,
the limitations above are steps of observation, evaluation, and judgment that
can be practically performed by a human mind. Accordingly, we conclude
the claim recites a method of observation, evaluation, and judgment that can
be practically performed in the human mind, which is a mental process
identified in the Memorandum, and thus an abstract idea.
USPTO Step 2A, Prong 23
In determining whether claim 2 is “directed to” the identified abstract
ideas, we next consider whether claim 2 recites additional elements that
integrate the judicial exception into a practical application. For the reasons
set forth below, we discern no additional element (or combination of
elements) recited in claim 2 that integrates the judicial exception into a
practical application. See Memorandum at 54–55.
The Examiner determines that “no other feature limitations in the
claim include additional elements that are sufficient to amount to
significantly more for improving the functioning of the computer itself.”
Final Act. 9; see also Ans. 4. The Examiner further determines that “[t]he
process in claim 1 does no more than call on a ‘computing device’ with
basic functionality for collecting input data and rules and, to do what doctors
do routinely.” Ans. 4.

3 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance).
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Appellant argues the claimed invention is similar to the one found
patent eligible in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016). App. Br. 9–11. According to Appellant,
[e]ven if various contrived and hypothetical scenarios can be
constructed where a human secretary may have been able to
perform this functionality (e.g., a caller calls a secretary, says ‘I
just emailed you a video about why I am calling your boss’, the
secretary opens up the email, watches the video and determines
the intent of the caller), the fact remains that the Examiner has
not shown the claim language to be ‘previously performable by
a computer’ pursuant to McRO (Emphasis added).
Id. at 11.
The Memorandum sets forth various factors that can be considered in
determining whether the additional limitations integrate the abstract idea into
a practical application. Memorandum at 55. This includes whether
 [a]n additional element reflects an improvement in the
functioning of a computer, or an improvement to other
technology or technical field; [and]
. . .
 An additional element merely recites the words ‘‘apply it’’ (or
an equivalent) with the judicial exception, or merely includes
instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea;
Id. (footnotes omitted); see also MPEP § 2106.05(a), (f).
Claim 1 does not constitute an improvement to computer technology;
rather, it merely adapts the mental process discussed above at a high level of
generality to be performed by a computer. Relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible. See Alice, 573 U.S. at 224 (“use of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions” is not an inventive concept); Bancorp Servs.,
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L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
2012) (a computer “employed only for its most basic function . . . does not
impose meaningful limits on the scope of those claims”);
MPEP § 2106.05(f)(2) (“Use of a computer or other machinery in its
ordinary capacity for economic or other tasks (e.g., to receive, store, or
transmit data) or simply adding a general purpose computer or computer
components after the fact to an abstract idea (e.g., a fundamental economic
practice or mathematical equation) does not provide significantly more.”).
McRO does not aid Appellant. The claims in McRO—unlike the
claims here—recited a “specific . . . improvement in computer animation”
using “unconventional rules” that related “sub-sequences of phonemes,
timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at
1302–03, 1307–08, 1313–15. In McRO, “the incorporation of the claimed
rules” improved an existing technological process. Id. at 1314. Critically,
the Federal Circuit focused on the claims in McRO utilizing different rules
than previously used by human animators. Id.
Unlike the claims in McRO, the claims here do not improve an
existing technological process. See Alice, 573 U.S. at 223 (explaining that
“the claims in Diehr were patent eligible because they improved an existing
technological process”); Ans. 9. Instead, the claims simply, at a high level
of generality, apply the abstract mental process. Although the claims recite
that the intent engine determines an intent based on communication input,
the claim does not recite any limitations on how the intent is determined.
Instead, the claim simply says applies the abstract idea and “claims that
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amount to nothing more than an instruction to apply the abstract idea using a
generic computer do not render an abstract idea eligible.”
MPEP § 2106.05(f) (citation omitted); see also MPEP § 2106.05(f)(1) (“The
recitation of claim limitations that attempt to cover any solution to an
identified problem with no restriction on how the result is accomplished and
no description of the mechanism for accomplishing the result, does not
provide significantly more because this type of recitation is equivalent to the
words ‘apply it’”.)
Appellant further argues that the Examiner erred in determining “that
independent claim 1 ‘is nothing but ordinary processes that can be . . .
performed by a regular computing device.’” App. Br. 11 (quoting Final
Act. 9). According to Appellant, “the Examiner has not provided any
evidence that a computer could perform the process of independent claim 1
before the effective priority date of the subject application.” Id. In support
of its argument, Appellant focuses on the Examiner’s reliance on section
103(a) to establish invalidity instead of anticipation. Id.
Appellant argues, instead, that the steps of claims 1 allow the
computer to perform a function not previously performable by a computer.
Id. at 11–12.
We are not persuaded by Appellant’s argument that the Examiner
erred. The Supreme Court has noted that “[t]he ‘novelty’ of any element[s]
or steps” in a claim or even the claim itself “is of no relevance in
determining whether the subject matter of a claim” satisfies § 101 because
the question “whether a particular invention is novel is ‘wholly apart from
whether the invention falls into a category of statutory subject matter.’”
Diamond v. Diehr, 450 U.S. 175, 189–90 (1981) (quoting In re Bergy, 596
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F.2d 952, 961 (CCPA 1979)). Further, the Federal Circuit has explained that
“[t]he search for a § 101 inventive concept is . . . distinct from demonstrating
§ 102 novelty.” Synopsys, 839 F.3d at 1151; see Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017).
“[U]nder the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016). “[A] claim for a new abstract idea is still an abstract idea.”
Synopsys, 839 F.3d at 1151.
USPTO Step 2B
Turning to step 2 of the Alice/Mayo framework, we look to whether
claim 2 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. Memorandum at 56.
As discussed above, claim 1 is directed to various steps which can be
performed mentally or manually. Similarly, the additional elements in the
claim amount to no more than mere instructions to apply the abstract idea
using generic computer components, which is insufficient to provide an
inventive concept. See Spec. ¶¶ 31, 32, 96–101 (discussing various well-
known components on which can be used with the claimed invention).
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions. See buySAFE, Inc. v.
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Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”); In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data,
extracts classification information from the received data, and stores the
digital images insufficient to add an inventive concept); Alice, 573 U.S. at
225–26 (receiving, storing, sending information over networks insufficient
to add an inventive concept); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011) (use of Internet to verify credit-card
transactions does not add enough to abstract idea of verifying the
transaction).
Conclusion on Section 101 Rejection
Accordingly, we sustain the Examiner’s rejection of claim 1 as being
directed to patent-ineligible subject matter, as well as claims 2–22, 31–52,
61–82, 91–112, and 121–149, not separately argued.
Claims 1–7, 10–22, 31–52, 61–82, 91–112, and 121–149 (Section
103(a) Rejection)
The Examiner finds that the combination of Trandal, Anantharaman,
and Sugano teaches the “determining the intent of the caller . . .” limitation
recited in claim 1. Final Act. 11–14. Specifically, the Examiner finds
Trandal teaches “determining an intent of the caller using the intent engine”
as recited in claim 1. Id. at 12 (citing Trandal, at [57], ¶¶ 9, 31). The
Examiner further finds that although Trandal does not teach using
communication input from a caller recited in claim 1 to determine the intent
of a caller, Anantharaman teaches using the recited communication input
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from a caller. Id. at 12–13 (citing Anantharaman ¶¶ 30, 76). The Examiner
also finds Sugano teaches determining “an intent based on a communication
input from the caller.” Id. at 13–14 (citing Sugano 5:7–9, 5:67–6:1,
19:26–28). Finally, the Examiner finds a person of ordinary skill in the art
would “have modified the teachings of Trandal and Anantharaman to
include a communication input from the caller as taught by Sugano because
it would allow the system to selectively make information available to
others.” Id. at 14 (citing Sugano 3:8–13).
In the Appeal Brief, Appellant argues that the Examiner erred in
finding the combination of Trandal and Anantharaman teaches the
“determining the intent of the caller . . .” limitation recited in claim 1. App.
Br. 12–17. Although Appellant includes Sugano in the heading, Appellant
does not address the Examiner’s findings regarding Sugano or the
combination of all three references. Id.
In the Reply Brief, however, Appellant addresses Sugano. See Reply
Br. 3–5. According to Appellant, the Examiner’s reliance on Sugano in the
Answer “is a fairly dramatic shift with respect to the prosecution history, as
Sugano is not mentioned a single time in the Advisory Action or the
Response to Arguments section of the Final Office Action.”
We do not consider the new arguments regarding Sugano raised for
the first time in the Reply Brief. Absent good cause, any argument not
raised in the Appeal Brief is waived and will not be considered by the Board.
See 37 C.F.R. §41.41(b)(2); Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (Informative) (“[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not.”).
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Appellant has not persuaded us that good cause exists. Although not
mentioned in the Advisory Action, the Examiner clearly and unambiguously
relied on Sugano in finding that the prior art teaches the “determining the
intent of the caller” limitation recited in claim 1. See Final Act. 11–14.
Sugano is identified in the ground of the rejection and discussed in the body
of the rejection in the Final Action. See Final Act. 11, 13–14. Mover,
because Sugano appears in a heading of the Appeal Brief, it is clear that
Appellant was aware of the Examiner’s reliance on Sugano. See App. Br. 12
(“B. Regarding the Rejections under 35 U.S.C. § 103 over Trandal in view
of Anantharaman in view of Sugano with Respect to Independent Claims 1,
31, 61, 91, 121, 129, 137, 145 and 146.” (emphasis in original omitted,
emphasis added)). Because the body of the rejection in the Final Action was
based, in part, on Sugano, Appellant has not shown good cause for not
addressing the reference in the Appeal Brief.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Because Appellant addresses the references individually
and does not address the Examiner’s findings regarding Sugano and the
combination of Trandal, Anantharaman, and Sugano, we are not persuaded
the Examiner erred.
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Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejection of claims 2–7, 10–22, 31–52, 61–82, 91–112, and 121–
149, which are not separately argued.
Claims 8 and 9 (Section 103(a) Rejection)
Claim 8 recites that “the text formatted communication input is an
emoticon formatted communication input.” Similarly, claim 9 recites that
identify an attribute of the caller “comprises applying facial recognition to
the video data to identify an attribute of the video data.” The Examiner finds
that Khouri teaches those additional limitations. See Final Act. 30–31;
Ans. 9–10.
Appellant argues that the Examiner erred in relying on Khouri. App.
Br. 17–20; Reply Br. 5–6. Specifically, Appellant argues Khouri is directed
to performing an action “with an actual connected call, in contrast to a call
attempt where the target device ‘is unavailable’ as recited in” the claims.
App. Br. 18. According to Appellant, “the mood-detection features of
Khouri would not reasonably be deployed in combination with the
references noted-above in context with a voicemail response scheme (or
other type of called party unavailable response scheme via some other type
of message service).” Id. Appellant further argues “Khouri does not
disclose anything suggestive of extending the mood-determination for non-
interactive scenarios, such as voicemail systems.” Id. at 19.
We are not persuaded by Appellant’s arguments that the Examiner
erred. Appellant focuses on whether literally combining Khouri’s mood-
detection feature during a call with the additional prior art teaches the
limitations recited in claims 8 and 9. However, “[t]he test for obviousness is
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not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference.” Keller, 642 F.2d
at 425. Instead, the relevant issue is “what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” Id.
“Combining the teachings of references does not involve an ability to
combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA
1973); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is
well-established that a determination of obviousness based on teachings
from multiple references does not require an actual, physical substitution of
elements.” (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
banc))).
The issue is not whether Khouri’s mood-detection during a call
teachers the specific limitations recited in the claims for determining the
intent of a user before a call is answered. Nor is the issue whether Khouri
taches using its mood-detection features in an interactive or non-interactive
system. Instead, the issue whether a person of ordinary skill in the art would
have combined Khouri’s mood-detection features with the intent engine as
taught by the combination of Trandal, Anantharaman, and Sugano.
Appellant has not argued that Khouri does not teach the mood-detection
features recited in claims 8 and 9 (just the timing of the mood-detection) nor
has Appellant argued that the proposed modification would have been
beyond the capabilities of a person of ordinary skill in the art. Absent such
an assertion, we “take account of the inferences and creative steps that a
person of ordinary skill in the art would employ,” and find a person of
ordinary skill in the art would overcome those difficulties within their level
of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id.
Appeal 2018-002545
Application 13/794,785

18
at 421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”). Accordingly, we agree with the Examiner that it would
have been obvious to combine’s Khouri’s mood-detection functionality with
the intent engine of the combination of Trandal, Anantharaman, and Sugano,
to determine the intent of a caller before a call is answered.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 8 and 9.

DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1–22, 31–52, 61–82, 91–112, and 121–149.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED