Avaya Inc.

Patent Trials and Appeals Board

Apr 2, 2020

14452472 - (D) (P.T.A.B. Apr. 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.
14/452,472 08/05/2014 Reinhard Klemm 648.0269 7608
93379 7590 04/02/2020
Setter Roche LLP
14694 Orchard Parkway
Building A, Suite 200
Westminster, CO 80023
EXAMINER
DEWAN, KAMAL K
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
pair_avaya@firsttofile.com
sarah@setterroche.com
uspto@setterroche.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte REINHARD KLEMM

Appeal 2019-006079
Application 14/452,472
Technology Center 2100

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

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. Appeal Br. 12. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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
“Avaya Inc.” Appeal Br. 2.
Appeal 2019-006079
Application 14/452,472
2
APPELLANT’S INVENTION
Appellant’s invention “relate[s] to . . . [,] particularly, . . . managing
the timing and/or conduct of interactions between contact center agents and
customers or potential customers of an entity.” Spec. ¶ 1. Claim 1,
reproduced below with added emphases, is illustrative of the claimed subject
matter.
1. A computer implemented method for managing
communications in a contact center, comprising:
monitoring social media activities by a community of users,
wherein the community of users includes at least one of
one or more customers of an entity;
one or more customers of a competitor of the entity;
one or more users of a product or service provided by the
entity; or
one or more users of a product or service provided by a
competitor of the entity;
automatically generating and storing a user profile for at least
some of the community of users, wherein each generated and
stored user profile includes an identity of the user, and at least
one of
an indication of the identified user’s sentiment toward the
entity at one or more points in time;
an indication of the identified user’s sentiment toward a
competitor of the entity at one or more points in time; or
an indication of the identified user’s sentiment toward a
particular product or service offered by the entity or a
competitor of the entity at one or more points in time;
establishing a communication session between a
communication terminal of an assigned contact center agent
and a first user for whom a user profile is stored; and
responsive to a change of sentiment with the first user being
reflected in the user profile, retrieving and displaying, to a
Appeal 2019-006079
Application 14/452,472
3
display of the communication terminal of the assigned contact
center agent, a menu including at least one option for, during
the communication session, addressing the change of
sentiment with the first user or capitalizing on the change of
sentiment with the first user.
Appeal Br., Claims Appendix.
REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception. Ans. 4–7; Final Act. 10–14.
Claims 1–6, 10, 11, 13–15, and 17–20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Khodorenko (US 2014/0237057 A1; Aug. 21,
2014), Daya (US 2013/0232159 A1; Sept. 5, 2013), and Parnaby (US
2013/0018838 A1; Jan. 17, 2013). Ans. 7–12; Final Act. 15–34.
Claims 7–9, 12, and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Khodorenko, Daya, and Parnaby, Goeldi
(US 2011/0307312 A1; Dec. 15, 2011). Ans. 13–14; Final Act. 35–39.
35 U.S.C. § 101 REJECTION OF CLAIMS 1–20
Appellant argues all claims as a group for this rejection.
Appeal Br. 7–8. We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv). For the following reasons, we are unpersuaded of error in
this rejection of claim 1 and accordingly sustain this rejection of claims 1–
20.
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,
Appeal 2019-006079
Application 14/452,472
4
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,
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
Appeal 2019-006079
Application 14/452,472
5
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.
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”). 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
Appeal 2019-006079
Application 14/452,472
6
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)).
Guidance 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:
(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.
Step 1: Does Claim 1 Fall within a Statutory Category?
There is no dispute that the claimed subject matter falls within a
35 U.S.C. § 101 category of patentable subject matter. See Guidance,
84 Fed. Reg. at 53−54 (“Step 1”).
Step 2A(1):2 Does Claim 1 Recite Any Judicial Exceptions?
We agree with the Examiner that claim 1 recites judicial exceptions.
See October 2019 Patent Eligibility Guidance Update at 1 (meaning of

2 The Guidance separates the enumerated issues (1) to (4) (see supra 6–7)
into the following Steps 2A(1), 2A(2), and 2B:
Appeal 2019-006079
Application 14/452,472
7
“describe”), 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). Specifically, we agree
the unemphasized limitations of reproduced claim 1 (supra 2–3) encompass
judicial exceptions recognized by the Guidance. Ans. 5–6; Final Act. 10.
We further agree these limitations encompass “certain methods of
Organizing Human Activity by managing personal . . . [i]nteractions
between people” (Ans. 5–6); e.g., interactions whereby a customer
complains about a service and consequently receives an incentive to remain
a customer (id. at 6). We also agree the encompassed interactions are:
monitoring social media activities by a community of users,
automatically generating and storing a user profile, the user
profile includes an identity of the user and at least one
indication of user's sentiment, establishing a communication
session between a communication terminal of an assigned
contact center agent and a first user for whom a user profile is
stored, and display of the communication terminal of the

[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]
Guidance at 51 (referencing, via the omitted footnote, “USPTO
Memorandum of April 19, 2018, ‘Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https://
www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF [ . . . ‛USPTO Berkheimer Memorandum’].”).
Appeal 2019-006079
Application 14/452,472
8
assigned contact center agent, a menu including at least one
option for, during the communication session addressing the
change of sentiment with the first user.
Final Act. 10.3
We add that the unemphasized limitations of reproduced claim 1,
though performed with some computer involvement (addressed below), also
encompass the judicial exception of “[m]ental processes—concepts
performed in the human mind[] (including an observation, evaluation,
judgment, opinion).” Guidance at 52 (footnote omitted).4 Specifically, the
claimed monitoring of social media and generating of a user profile, which
reports the sentiments of the social media, encompass a person observing
and reporting the sentiments of someone’s statements. The claimed
retrieving of options and establishing of a communication, which are
responsive to the reported sentiments, encompass a person determining and
offering compensation for someone’s sentiment (e.g., remedying a
complaint).
For the foregoing reasons, claim 1 recites judicial exceptions.

3 As mentioned, we use the Guidance to identify limitations encompassing
judicial-exceptions. See Guidance, 84 Fed. Reg. at 51 (“All USPTO
personnel are . . . expected to follow the guidance.”). However, we note the
Southern District of New York has held that sentiment analysis of social
media is an abstract idea. iSentium, LLC v. Bloomberg Fin. L.P., 343
F.Supp.3d 379 (S.D.N.Y. 2018). Specifically, the court held the given
“method for calculating sentiment using social media messages” (id. at 386)
is “directed to [an] abstract idea of collecting statements from social media
and identifying opinions” (id. at 388).
4 The omitted footnote states a mental process is encompassed if the claim
“covers performance in the mind but for the recitation of generic computer
components,” but not if performance “cannot practically be performed in the
mind.” 84 Fed. Reg. at 52 n.14.
Appeal 2019-006079
Application 14/452,472
9
Step 2A(2): Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
We agree with the Examiner that claim 1’s additional elements do not
integrate the recited judicial exceptions (the above activities) into a practical
application. See Guidance, 84 Fed. Reg. at 53 (describing a “practical
application” as a “meaningful limit on the [recited judicial exceptions], such
that the claim is more than a drafting effort designed to monopolize the
[exceptions]”); id. at 55 (“exemplary considerations . . . indicative [of] a
practical application”). Specifically, we agree claim 1 “recites additional
elements of using a computer implemented method . . . , establishing a
communication session between a communication terminal of an assigned
contact center agent and [the] first user, and display[ing] a menu [that]
include[s the] at least one option.” Ans. 6. We also agree these elements are
recited as “generic computing devices, data structure and methods.”
Final Act. 11. We further agree these elements are “recited [as operating] at
a high-level of generality” and as “invok[ing] computers and [their]
communications merely as a tool.” Id. at 7.
We add that, as reflected by the above determinations, the only
additional element of possible consequence is the claimed use of a call
center’s communication terminal to: receive and display a menu option
responsive to the profiled user’s change of sentiment; and establish a
communication session with the first user. Claim 1’s other additional
elements are the labeling of the method as “computer implemented” and
labeling of the profile’s generating and storing as “automatic.” Claim 1’s
labeling of the method as “computer implemented” is inconsequential
because a mere instruction to implement a process on a computer cannot
Appeal 2019-006079
Application 14/452,472
10
impart patent-eligibility.5 Mortgage Grader, Inc. v. First Choice Loan
Servs., NYLX, Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (“Alice made clear
that a claim directed to an abstract idea does not move into § 101 eligibility
territory by merely requiring generic computer implementation.” ).
Claim 1’s labeling of the profile’s generating and storing as “automatic” is
inconsequential because a mere instruction to automate cannot impart
patent-eligibility. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288, 1311 (Fed. Cir. 2016) (“[A] claim cannot become eligible by
reciting that physical automation is accomplished by a machine or that
logical automation is accomplished by a computer.” (internal quotation
marks and citation omitted)). Because there is no need to further address the
“computer implemented” and “automatic” labels, all further consideration of
additional elements references only the claimed use of the communication
terminal.
We also add that MPEP § 2106.05(a)–(c) and (e)–(h) support the
Examiner’s above determinations. See Guidance. at 55 nn.25, 27–32 (citing
these MPEP sections). Appellant should bear in mind that none of these
parts (a)–(c) and (e)–(h) is intended to be separately dispositive. MPEP at
2100-46 (§ 2106.05.I.A). They are collective considerations.
MPEP § 2106.05(a) concerns “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field.” MPEP at
2100-50. Specifically, it concerns “whether the claim purports to improve
computer capabilities or, instead, invokes computers merely as a tool.”
Id. at 2100-51–52. Having reviewed Appellant’s claim 1, Specification, and

5 Claim 1 does not identify technology for monitoring the social media or
generating the user profile, nor even state whether the monitoring collects
data for the user profile.
Appeal 2019-006079
Application 14/452,472
11
arguments, we find no indication that the invention improves computer
capabilities. Rather, we find indications that the invention improves the
timeliness and granularity of customer sentiment measurements by
monitoring social media for sentiment changes of individual users—not by,
for example, a technological improvement to data mining. See Spec. ¶¶ 2–5.
The lack of a technological improvement is reflected by claim 1 indescriptly
using a call center terminal (i.e., not specifying how a computer achieves the
uses) to merely: establish a communication session between the terminal and
profiled user; and retrieve/display the menu option.
MPEP § 2106.05(b) and (c) respectively concern use of a “Particular
Machine” and “Particular Transformation.” MPEP at 2100-54, 56
(transformation must be “of an article”). We find no indication that the
invention uses a particular machine or performs a particular transformation.
MPEP § 2106.05(e) concerns “Other Meaningful Limitations.”
MPEP at 2100-62. Specifically, it concerns whether the claim “limitations
[go] beyond generally linking the use of the judicial exception to a particular
technological environment.” Id. It also describes, as an example of
limitations falling short of this threshold, a “data processing system and
communications controllers . . . [that] merely linked the use of the abstract
idea to a particular technological environment[,] i.e.,‛implementation via
computers’[.]” Id. (citing Alice, 573 U.S. at 226). We find the claimed
additional elements likewise merely link the recited judicial exceptions to
data processing and communication, because the claimed call center
terminal at most indescriptly adds its electronic data retrieval/display of the
menu option (data processing) and its communication session with the
profiled user (communications controller).
Appeal 2019-006079
Application 14/452,472
12
MPEP § 2106.05(g)6 concerns “Insignificant Extra-Solution
Activity.” Id. at 2100-67–69. Specifically, it concerns whether “the
additional elements add more than . . . activities incidental to the primary
process or product.” Id. at 2100-67. We find no indication that the claimed
additional elements are more than incidental to the invention’s aim of
increasing the timeliness and granularity of customer sentiment
measurements. Spec. ¶¶ 2–5. Rather, we find the claimed use of the
communication terminal to retrieve and display the menu option is plainly
analogous to § 2106.05(g)’s extra-solution examples of retrieving (printing)
a generated report (id. at 2100-67) and presenting a generated price (id. at
2100-68 (citing OIP Techs., Inc. v.Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015)).
MPEP § 2106.05(h) concerns “Field of Use and Technological
Environment.” MPEP at 2100-69. Specifically, it concerns whether an
industry-specific claim limitation is “integrated into the claim” or rather
does “not alter or affect how the process steps of calculating . . . were
performed.” Id. at 2100-70; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1311 (Fed. Cir. 2016) (“[F]ield-of-use
limitations . . . describe only the context[,] rather than the manner[,] of
achieving a result.”). We find no indication that claim 1’s industry-specific
limitations—e.g., monitoring social media of “customers” or using a
communication terminal of a “call center”—alter how the invention
performs the claimed monitoring of social media, generating of the user

6 Because part (f) recommends to first address the other considerations
(MPEP at 2100-64), we address part (f) after parts (g) and (h).
Appeal 2019-006079
Application 14/452,472
13
profile, establishing of the communication session, and retrieving/display of
the menu option.
MPEP § 2106.05(f) concerns “Mere Instructions To Apply An
Exception.” MPEP at 2100-63. Specifically, it concerns the “particularity
or generality of the application of the judicial exception.” Id. at 2100-66–67.
We address this consideration with reference to McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), which is twice
cited by MPEP § 2106.05(f) and addresses a patent-eligible software
implementation of an abstract idea (McRO, 837 F.3d 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
this concern, McRO identified a claimed means (“first set of rules”) that
applied unconventional data (“a keyframe at a point that no phoneme is
being pronounced,” i.e., at a “phoneme sub-sequence”) to the abstract idea
(use of “morph-weights” to lip-synchronize animation) and thereby
prevented preemption of the abstract idea. 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).
Whereas the above “means” of McRO’s claim prevents preemption of the
Appeal 2019-006079
Application 14/452,472
14
recited abstract idea, we find no indication that Appellant’s invention
prevents preemption of the judicially-excepted subject matter (identified
above for Step 2A(1)). Rather, there is a plain risk that claim 1 would
monopolize the combination of: monitoring social media for sentiment
changes of individual users; generating a user profile that reports sentiment
changes of the user’s monitored social media; establishing a communication
with the user; and retrieving a course of action (option) responsive to a
reported sentiment change of the user.
For the foregoing reasons, claim 1 is directed to judicial exceptions—
not to a practical application.
Step 2B: Does Claim 1 Recite Anything That Is
Beyond the Recited Abstract Ideas and Not a Well-Understood, Routine,
Conventional (“WURC”) Activity?
We agree with the Examiner that claim 1 does not recite any feature
that is significantly more than the judicial exception or that is anything more
than WURC. 84 Fed. Reg. at 56. Specifically, we agree with the Examiner
that the Specification evidences the claimed additional elements are WURC
by disclosing:
[S]ystem 100 includes a server 102, user (or customer) devices
104, one or more social networking site servers, collectively
referred to as social media server(s) 106, one or more routing
servers 108, and a contact center 110. The server 102 is a
computing device, for example a desktop computer, laptop,
tablet computer, and the like. The user device 104 is a
computing device, for example a desktop computer, laptop,
tablet computer, [s]martphone, and the like. A network 10
includes a communication system that connects computers (or
devices) comprising the server 102, customer devices 104,
social media servers 106, routing servers 108, and contact
center 110 by wire, cable, fiber optic and/or wireless link
Appeal 2019-006079
Application 14/452,472
15
facilitated by various types of well-known network elements.
Contact center 110 is a conventional contact center[.]
Final Act. 5 (citing Spec. ¶¶ 29–30, 33, 35–36). We further agree with the
Examiner that the claimed additional elements perform WURC activity
because they, in implementing the judicial exceptions, “perform well-known
and routine[:] monitoring, collection, review and analysis of user data[;] and
tailoring [of] the display screen functions” (to the user profile). Final Act.
11–12 (citing MPEP 2106.05(d)II and Spec. ¶¶ 29–30, 33, 35–36); see also
MPEP § 2106.05(d)(II) at 2100-60–61 (examples of computer functions that
are judicially-recognized “as [WURC] functions [if] claimed in a merely
generic manner”); Berkheimer Memorandum § III.A.2 (stating MPEP
§ 2106.05(d)(II) is acceptable evidence of WURC computer functions).
For the foregoing reasons, the claimed combination of judicial
exceptions and additional elements consists of judicial exceptions and
appended WURC features.
Appellant’s Arguments
Appellant’s arguments do not show the Examiner erred. See In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (“[T]he burden of
. . . [r]ebuttal is . . . a showing of facts supporting the opposite conclusion.”
(internal quotation marks and citation omitted)); SHOW, Black’s Law
Dictionary (10th ed. 2014) (“To make (facts, etc.) apparent or clear by
evidence; to prove”). For example, Appellant’s arguments do not present
sufficient evidence or reasoning that indicates: a claim feature was wrongly
identified as judicially-excepted or WURC activity; or a combination of
claim features prevents preemption of the recited judicial exceptions.
Appeal 2019-006079
Application 14/452,472
16
Appellant specifically contends:
[T]he claims directly relate to the establishment of a
communication session between a communication terminal of
an agent and a user having a user profile. Likewise, the claims
provide for a GUI element (i.e., the menu) that can assist the
agent during the communication session based on information
in that user profile. Both of the aforementioned properties of
the present claims have tangible effects on communication
systems and do not exist merely in the abstract.
[T]he claims effect the establishment of a communication
session with a user having a user profile, which has the
practical application of establishing a communication session
with a user that has a known relevance to the contact center, as
indicated by the user profile. Likewise, displaying a menu
comprising at least one option to address/capitalize on the
sentiment has the practical application of enhancing an agent's
ability to handle the first user while using the communication
terminal for the communication session.
Appeal Br. 7; see also Reply Br. 2. We are unpersuaded because, as
discussed for Step 2A(2), the above “tangible effects” (block quote) do not
amount to a practical application.
35 U.S.C. § 103 REJECTION OF
CLAIMS 1–6, 10, 11, 13–15, AND 17–20
OVER KHODORENKO, DAYA, AND PARNABY
Claim 1 recites in disputed part: “responsive to a change of sentiment
. . . , retrieving and displaying . . . a menu.” Appeal Br. 8. The remaining
claims recite or incorporate similar subject matter.
Appellant contends that the Examiner, in reading the disputed
limitation on Parnaby, fails to address the “change of” language.
Appeal Br. 9–10; Reply Br. 3. Appellant further contends that Parnaby’s
response to social media postings of particular sentiment is not a response to
whether a posting constitutes a change of sentiment. Id.
Appeal 2019-006079
Application 14/452,472
17
The Examiner determines that Appellant’s argument is not
commensurate with claim 1’s scope. Ans. 8–9. The Examiner further
replies that “Parnaby . . . teaches of ‘. . . offers such as recommendations,
deals, incentives and other value added services based upon a personalized
tracking of the user’s negative or positive sentiments changes[’]” (emphasis
added). Id. at 9 (citing Parnaby ¶¶ 26, 70, 72).
At the outset, we note the Examiner’s above finding misquotes
Parnaby as describing offers “based upon a . . . user’s negative or positive
sentiments changes” (emphasis added). Id. Parnaby’s quoted paragraph 72
describes offers “based upon . . . negative or positive sentiments,” i.e., never
mentioning sentiment changes. We therefore disagree with the Examiner’s
above characterization of Parnaby’s cited teachings.
We agree, on the other hand, with Appellant’s characterization of
Parnaby’s cited teachings. Parnaby’s paragraph 26 is representative of the
cited disclosures and teaches:
[A] tracking user (e.g., a restaurant, corporation, etc.) can take
action based upon contributing user sentiment and one other
tracking variable (e.g., contributing user location, contributing
user status, etc.). For example, a user dining at a restaurant
who jabs the chocolate cake dessert selection while dining may
receive a coupon for a complimentary dinner from the
restaurant upon departing[.]
Parnaby ¶ 26; see also id. ¶¶ 70–73 (detailed description of the “tracking
user” feature). We agree with Appellant that, though Parnaby’s above
tracking feature notifies a user of social media postings that include a
particular sentiment (e.g., jab, intensity level), the notification is not caused
by (“responsive to”) a change in sentiment—i.e., by a deviation from past
sentiment. See also e.g., id. ¶ 73 (tracking posts that “express negative
sentiment with high intensity”). Rather, the notification is caused only by
Appeal 2019-006079
Application 14/452,472
18
the current sentiment.
Moreover, Parnaby’s cited disclosures do not even mention a person
changing their sentiment. But see Parnaby ¶ 33 (tracking of whether a
“second user . . . states ‘I agree’ or ‘I disagree’ with the first user’s
expressed sentiment”). Had Parnaby intended to disclose such a change,
doing so would have been as easy as noting a change from a “fab” to a “jab”
or a change in intensity. See id. ¶ 8 (first paragraph of the invention’s
“summary of aspects” focuses on these fab/jab and intensity inputs). We
cannot find such a change (nor any change) to sentiment.
We note that the Examiner may have found a discrepancy with respect
to claim 1’s argued “responsive to a change of sentiment” limitation and
consequently reads the “change of” language out of the limitation (to
reconcile the discrepancy). Ans. 8–9. Namely, the Examiner may have
determined that, because “the user profile includes . . . an indication of
. . . sentiment . . . at one or more points in time” and the argued “change of
sentiment . . . [is] being reflected in the user profile,” there is discrepancy
insofar the profile’s indication of sentiment at one point in time cannot
reflect a change in sentiment (i.e., a deviation between past and present
sentiment). Assuming (arguendo) the above, the Examiner’s claim
interpretation is erred for reading the “change of” language out of the claim.
See Application of Wilson, 424 F.2d 1382, 1385 (C.C.P.A. 1970) (“Rather
than reject the claims as indefinite, the board chose to ignore the language it
considered indefinite[.] . . . . This reasoning is incorrect. All words in a
claim must be considered in judging the patentability of that claim against
the prior art.”); see also In re Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303 (Fed. Cir. 2011) (“[If] the public is left to guess [what] the
claims cover . . . [, they] fail to fulfill the ‘public notice function’ of 35
Appeal 2019-006079
Application 14/452,472
19
U.S.C. § 112 ¶ 2.”); Competitive Techs., Inc. v. Fujitsu Ltd., 185 F. App’x
958, 965–66 (Fed. Cir. 2006) (“Because the ‘address means’ limitation of
claim 5 requires ISA structures, and the ‘sustain means’ limitation of that
same claim excludes ISA structures, . . . the claims . . . are internally
inconsistent . . . [and] invalid because of indefiniteness.”).
For the foregoing reasons, we do not sustain this rejection of claims
1–6, 10, 11, 13–15, and 17–20 under 35 U.S.C. § 103.
35 U.S.C. § 103 REJECTION OF
CLAIMS 7–9, 12, AND 16 OVER
KHODORENKO, DAYA, AND GOELDI
As the same error exists in the rejection of dependent claims 7–9, 12,
and 16 under 35 U.S.C. § 103 as indicated above with respect to claims 1−6,
10, 11, 13−15, and 17−20, we do not sustain this rejection.
CONCLUSION
For the foregoing reasons, we affirm the Examiner’s decision to reject
claims 1–20.7

7 “The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim.” 37 C.F.R. § 41.50.
Appeal 2019-006079
Application 14/452,472
20
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–20 101 Eligibility 1–20
1–6, 10, 11,
13–15, 17–
20
103 Khodorenko, Daya,
Parnaby
1–6, 10, 11,
13–15, 17–20
7–9, 12, 16 103 Khodorenko, Daya,
Parnaby, Goeldi
7–9, 12, 16
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED