Avaya Inc.

Patent Trials and Appeals Board

Nov 24, 2020

2019004061 (P.T.A.B. Nov. 24, 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.
14/507,238 10/06/2014 David Skiba 4366-683 2203
48500 7590 11/24/2020
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
AL AUBAIDI, RASHA S
ART UNIT PAPER NUMBER
2652
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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):
cjacquet@sheridanross.com
edocket@sheridanross.com
pair_Avaya@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID SKIBA, VALENTINE C. MATULA,
and GEORGE ERHART
____________

Appeal 2019-004061
Application 14/507,238
Technology Center 2600
____________

Before JOHN A. EVANS, CATHERINE SHIANG, and JASON J. CHUNG,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jurisdiction
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 1–5, 7–14, and 16–24. Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant states that Avaya, Inc. is the real party in
interest. Appeal Br. 2.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
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Summary of the Invention
The claims relate to a method of training and assessing persons. See
Abstract.
Invention
Claims 1, 11, and 17 are independent. Claims App. An
understanding of the invention can be derived from a reading of Claim 1,
which is reproduced in Table 1, infra.
References
Name3 Publication Number Date
Shaffer US 2007/0160054 A1 July 12, 2007
Knight, Jr US 2009/0110182 A1 Apr. 30, 2009
Heller US 7,916,858 B1 Mar. 29, 2011
Minert US 8,180,662 B2 May 15, 2012
Nies US 2014/0143026 A1 May 22, 2014

refer to the Appeal Brief filed October 1, 2018, (“Appeal Br.”); the Reply
Brief filed April 30, 2019, (“Reply Brief”); the Examiner’s Answer mailed
March 1, 2019, (“Ans.”); the Non-Final Action mailed May 3, 2018, (“Non-
Final Act.”); and the Specification filed October 6, 2014, (“Spec.”) for their
respective details.
3 All citations herein to the references are by reference to the first named
inventor/author only.

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Rejections4

Claims Rejected5 35 U.S.C. § References/Basis
1–3, 7–14, 16–24 101 Subject Matter Eligibility
Non-Final Act. 2–5.
11–16 112(f)

Recitation of “means” without
corresponding structure.
Non-Final Act. 5–7.
1–3, 7–10, 17–20, 24 103 Heller, Knight, Minert
Non-Final Act. 8–13.
11–14, 16 103 Heller, Minert, Shaffer
Non-Final Act. 13–17.
20, 21 103 Heller, Knight, Minert, Nies
Non-Final Act. 18.
23 103 Heller, Minert, Shaffer, Nies
Non-Final Act. 18–19.

ANALYSIS
We have reviewed the rejections of Claims 1–5, 7–14, and 16–24 in
light of Appellant’s arguments that the Examiner erred. We have considered
in this Decision only those arguments Appellant actually raised in the Briefs.
Any other arguments which Appellant could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We

4 The Application was examined under the first inventor to file provisions of
the AIA. Non-Final Act. 2.
5 The Examiner’s Answer does not renew the objections to the Title and to
Claim 1. See Final Act. 2; Appeal Br. 3–4; and Answer 7–15.
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consider Appellant’s arguments as they are presented in the Appeal Brief and
the Reply Brief.
CLAIMS 1–3, 7–14, 16–24: INELIGIBLE SUBJECT MATTER
Appellant argues the merits of the claims as a group, but without
reference to the limitations of any specific claim. See Appeal Br. 5–8.
Therefore, we decide the appeal of the 35 U.S.C. § 101 rejection on the basis
of illustrative Claim 1 and refer to the rejected claims collectively herein as
“the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); see also In re King, 801 F.2d
1324, 1325 (Fed. Cir. 1986).
We reviewed the record de novo. SiRF Tech., Inc. v. Int’l Trade
Commission, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is
drawn to patent-eligible subject matter is an issue of law that we review de
novo.”). Appellant’s Reply Brief argues the Office failed to apply the “2019
Revised Patent Subject Matter Eligibility Guidance.” Reply Br. 1. Based
upon our review of the record in light of recent policy guidance with respect
to patent-eligible subject matter rejections under 35 U.S.C. § 101, we affirm
the rejection of Claims 1–5, 7–14, and 16–24 for the specific reasons
discussed below.6
35 U.S.C. § 101
Section 101 provides that a patent may be obtained for “any new and

6 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter “Revised Guidance, 84 Fed. Reg.”) “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” Revised Guidance, 84 Fed. Reg. 51; see also
October 2019 Update at 1 (October 2019 Update: Subject Matter Eligibility)
(hereinafter “October 2019 Update”).
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useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101.7 The Supreme Court
has long recognized, however, that section 101 implicitly excludes “[l]aws
of nature, natural phenomena, and abstract ideas” from the realm of patent-
eligible subject matter, as monopolization of these “basic tools of scientific
and technological work” would stifle the very innovation that the patent
system aims to promote. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–78 (2012); Diamond v. Diehr, 450
U.S. 175, 185 (1981).
Under the mandatory Revised Guidance, 84 Fed. Reg., we reconsider
whether Appellant’s claims recite:
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)).

Only if a claim, (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then reach the
issue of whether the claim:
3. adds a specific limitation beyond the judicial exception that is not

7 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under 35 U.S.C. § 101. MPEP § 2106.
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“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.

Step 2A(i): Whether the claims recite a judicial exception.
The Revised Guidance, 84 Fed. Reg., extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the
abstract-idea exception includes the following groupings of subject matter:
(a) mathematical concepts,8 i.e., mathematical relationships, mathematical
formulas, equations,9 and mathematical calculations;10 (b) certain methods
of organizing human activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or

8 Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“The concept of hedging . . .
reduced to a mathematical formula . . . is an unpatentable abstract idea.”).
9 Diehr, 450 U.S. at 191 (“A mathematical formula as such is not accorded
the protection of our patent laws,”); Parker v. Flook, 437 U.S. 584, 594
(1978) (“[T]he discovery of [a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.”).
10 SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a “series of mathematical calculations based on
selected information” are directed to abstract ideas).
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instructions);11 and (c) mental processes—concepts performed in the human
mind (including observation, evaluation, judgment, opinion).12
The preamble of independent Claim 1 recites: “An electronic system,
comprising.” The limitations recited in the body of the claim are analyzed in
Table I against the categories of abstract ideas as set forth in the Revised
Guidance, 84 Fed. Reg. As set forth in Table I below, we find limitations
[e]–[g], [i], and [k] of independent Claim 1 recite abstract ideas, i.e., “mental
processes.”
Table I
Claim 1 Revised Guidance
[a]13 a network interface to a
communication network;

An additional element that adds
insignificant extra-solution activity
to the judicial exception. See
Revised Guidance, 84 Fed. Reg. 55.
[b] a memory;

An additional element that adds
insignificant extra-solution activity
to the judicial exception. See
Revised Guidance, 84 Fed. Reg. 55.
[c] a processor that:

An additional element that adds
insignificant extra-solution activity

11 Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate
settlement risk is a “fundamental economic practice” and thus an abstract
idea); see also Revised Guidance, 84 Fed. Reg. 52 n.13 for a more extensive
listing of “[c]ertain methods of organizing human activity” that have been
found to be abstract ideas.
12 Mayo, 566 U.S. at 71 (“[M]ental processes[ ] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work.”) (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
13 Step designators, e.g., “[a],” were added to facilitate discussion.
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to the judicial exception. See
Revised Guidance, 84 Fed. Reg. 55.
[d] receives a work item at a contact
center;

An additional element that adds
insignificant extra-solution activity
to the judicial exception, i.e., mere
data-gathering. See Revised
Guidance, 84 Fed. Reg. 55.
[e] determines an attribute of the
work item;

Mental processes, i.e., concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance, 84 Fed. Reg. 52.
[f] determines eligibility for the
work item to be a training work
item comprising determining the
work item is not associated with a
customer that has had a previous
work item that was previously
determined to be a previous training
work item;
Mental processes, i.e., concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance, 84 Fed. Reg. 52.
[g] upon determining the work item
is eligible to be a training work
item:
selects an agent to be an agent under
test from a pool of agents, wherein
the selected agent has previously
been determined to have a
proficiency with the attribute that is
below a primary agent status
proficiency level; and
Mental processes, i.e., concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance, 84 Fed. Reg. 52.
[h] routes, via the network interface,
the work item to the agent under
test;
An additional element that adds
insignificant extra-solution activity
to the judicial exception. See
Revised Guidance, 84 Fed. Reg. 55.
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[i] evaluates the performance of the
agent under test in processing of the
work item, wherein the evaluation is
associated with the attribute; and
Mental processes, i.e., concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance, 84 Fed. Reg. 52.
[j] reports indicia of the evaluated
performance of the agent under test
to a report receiving component of
the contact center; and
An additional element that adds
insignificant extra-solution activity
to the judicial exception, i.e., mere
data-gathering. See Revised
Guidance, 84 Fed. Reg. 55.
[k] accesses the memory comprising
a prior work history for the pool of
agents and selects the agent under
test from the pool of agents that
have previously been determined to
have a proficiency with the attribute
that is below a primary agent status
proficiency level by failing to
successfully process the prior work
item having the attribute.
Mental processes, i.e., concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance, 84 Fed. Reg. 52.

The Examiner finds independent Claims 1, 11 and 17 are directed to
the abstract idea of “determining the eligibility of received work item to be a
training work item” without reciting “significantly more.” Non-Final Act. 3.
Appellant contends the Examiner bases the findings on a mischaracterization
of the claims. Appeal Br. 5. We disagree with Appellant because our
analysis set forth in Table I reveals the claims recite at least the “mental
process” category of abstract ideas.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we so conclude
above, we proceed to the “practical application” Step 2A(ii) wherein the
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“claims are considered in their entirety to ascertain whether their character
as a whole is directed to excluded subject matter.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (citations
omitted). This test determines whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
For the reasons which follow, we conclude that Appellant’s claims do
not integrate the judicial exception into a practical application.
MPEP § 2106.05(a) “Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field”
“In determining patent eligibility, examiners should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’” or
“any other technology or technical field.” MPEP § 2106.05(a).
Appellant argues: “the claims recite the routing of work items to
particular agents selected in accordance with the work item being selected
for use as a training work item.” Appeal Br. 5. Appellant argues the
“claims, counter to the rejection, do not merely determine if a work item can
be a training work item and ‘nothing significantly more.’ In contrast, an
agent is selected for the purpose of processing the work item and benefiting
from the training that may be realized from that particular work item being
routed to that particular agent.” Id. 5–6.
Although we find the individual limitations [b]–[d] are directed to
mental processes, we find the claims as a whole are directed to “[c]ertain
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methods of organizing human activity,” i.e., “commercial or legal
interactions []including . . . advertising, marketing or sales activities or
behaviors; business relations.” See Revised Guidance, 84 Fed. Reg. 52.
Because, as Appellant discloses the:
[t]raining [of] agents is an important aspect of contact center
management. The training of agents is an ongoing struggle as
the subject matter covered by the contact center changes as well
the need for the agent to increase and improve on their portfolio
of skills. . . . The administrators are also charged with providing
training programs to keep their agents' skills up to date. Having
to manually manage training programs, ensure the agents receive
their training, and the agents who receive their training have their
training reported represents a portion of the significant
challenges faced by administrators.
Spec. ¶ 3. To address these problems in the organization of humans,
Appellant discloses:
It is with respect to the above issues and other problems that the
embodiments presented herein were contemplated. In one
embodiment, agent’s non-primary skills are improved by the
automatic and period assignment of non-primary work items for
training and/or evaluation purposes.
Spec. ¶ 5.
We do not find changes to a personnel management practice implicate
how a computer, per se, operates, nor do we find that the claims improve
any other technology.
Appellant argues: “improvements to in another field are plainly
evident, such as in use of routing work items in a contact center for the
purpose of resolving the work item and for the purpose of improving the
incremental skill of an agent.” Appeal Br. 8.
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We are not persuaded that “routing work items in a contact center”
constitutes an improvement to any technology.
MPEP § 2106.05(b): Particular Machine
The Bilski machine-or-transformation test is only applicable literally
to method (process) claims. However, “[r]egardless of what statutory
category (‘process, machine, manufacture, or composition of matter,’ 35
U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the
underlying invention for patent-eligibility purposes.” CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011). Here, it is
clear that the invention underlying the system of Claims 1 and 11 and the
server of Claim 17, is the method practiced by the system of Claim 1. We
therefore, analyze the machine prong of the Bilski machine-or-
transformation test.
Appellant discloses generic machines and software are suitable:
In accordance with at least some embodiments of the present
disclosure, the communication network 104 may comprise any
type of known communication medium or collection of
communication media and may use any type of protocols to
transport messages between endpoints.
Spec. ¶ 36.
An example of such a harvested communication includes a
social media communication that is harvested by the work
assignment mechanism 116 from a social media network or
server.
Spec. ¶ 37.
The communication devices 108 may comprise any type of
known communication equipment or collection of
communication equipment. Examples of a suitable
communication device 108 include, but are not limited to, a
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personal computer, laptop, Personal Digital Assistant (PDA),
cellular phone, smart phone, telephone, or combinations
thereof.
Spec. ¶ 40.
We find no indication, nor does Appellant so direct our attention, that
the claimed invention relies on other than generic devices or uses other than
generic software. Moreover, Appellant explicitly discloses the handling of
the claimed work items does not require any technology at all: “In one
embodiment, a plurality of work items 204 are received, routed, and
processed by a number of agents 112 ( e.g., resources 112). While the
embodiments disclosed herein are generally directed towards agents 112
being human agents of a contact center . . .” Spec. ¶ 46 (present emphasis).
We, therefore, conclude Appellant’s claims fail to satisfy the machine prong
of the Bilski machine-or-transformation test.
MPEP § 2106.05(c): Particular Transformation
This section of the MPEP guides: “Another consideration when
determining whether a claim recites significantly more is whether the claim
effects a transformation or reduction of a particular article to a different state
or thing.” “Transformation and reduction of an article to a different state or
thing is the clue to the patentability of a process claim that does not include
particular machines.” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S.
at 70).
The claims select and analyze certain electronic data, i.e., “work
assignments.” See Spec. ¶ 45. The selection of electronic data is not a
“transformation or reduction of an article into a different state or thing
constituting patent-eligible subject matter.” See In re Bilski, 545 F.3d 943,
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962 (Fed. Cir. 2008) (emphasis added); see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“The mere
manipulation or reorganization of data . . . does not satisfy the
transformation prong.”). Applying this guidance here, we conclude
Appellant’s method claims fail to satisfy the transformation prong of the
Bilski machine-or-transformation test.
MPEP § 2106.05(e): Other Meaningful Limitations
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment.
450 U.S. 175[] (1981). In Diehr, the claim was directed to the
use of the Arrhenius equation (an abstract idea or law of nature)
in an automated process for operating a rubber-molding press.
450 U.S. at 177-78. . . . The Court evaluated additional
elements such as the steps of installing rubber in a press,
closing the mold, constantly measuring the temperature in the
mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184,
187. . . . In contrast, the claims in Alice Corp. v. CLS Bank
International did not meaningfully limit the abstract idea of
mitigating settlement risk. 573 U.S. 208 [](2014). In
particular, the Court concluded that the additional elements
such as the data processing system and communications
controllers recited in the system claims did not meaningfully
limit the abstract idea because they merely linked the use of the
abstract idea to a particular technological environment (i.e.,
“implementation via computers”) or were well-understood,
routine, conventional activity.

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“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. Similarly as in Alice, we find
that “[t]aking the claim elements separately, the function performed by the
computer at each step of the process is ‘[p]urely conventional.’” Id. (citation
omitted). “In short, each step does no more than require a generic computer
to perform generic computer functions.” Id.
We find that Appellant’s claims do not add meaningful limitations
beyond generally linking the use of the judicial exception to a particular
technological environment.
MPEP § 2106.05(f): Mere Instructions to Apply an Exception
Appellant does not persuasively argue that their claims do any more
than to merely invoke generic computer components merely as a tool in
which the computer instructions apply the judicial exception.
MPEP § 2106.05(g): Insignificant Extra-Solution Activity
The claims acquire and display data, which are classic examples of
insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963 (en
banc), aff’d sub nom, Bilski, 561 U.S. at 593.
MPEP § 2106.05(h): Field of Use and Technological
Environment
[T]he Supreme Court has stated that, even if a claim does not
wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or
post-solution activity—such as identifying a relevant audience,
a category of use, field of use, or technological environment.
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Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
(citation omitted).
We find the claimed data-manipulation is simply a field of use that
attempts to limit the abstract idea to a particular technological environment.
We are unpersuaded by Appellant’s arguments because the mere application
of an abstract idea in a particular field is not sufficient to integrate the
judicial exception into a practical application. See Revised Guidance, 84
Fed. Reg. 55, n.32. In view of the foregoing, we conclude the claims are
“directed to” a judicial exception.
Step 2B Well-understood, routine, conventional
Because the claims recite a judicial exception and do not integrate that
exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field. Revised
Guidance, 84 Fed. Reg. 56; see also Appeal Br. 23 (citing the “Berkheimer
Memorandum”).14 As discussed above, the written description describes the
claimed computer system consistent with its being “well-understood,
routine, [and] conventional.” Appellant discloses the claimed system relies
on “any type of known communication equipment.” See Spec. ¶ 40.
C. Specified at a high level of generality
It is indicative of the absence of an inventive concept where the

14 Memorandum from Robert W. Bahr, Deputy Comm’r for Patent
Examination Policy, to Patent Examining Corps, U.S. Patent and Trademark
Office (April 19, 2018), https://www.uspto.gov/sites/default/files/
documents/memo-berkheimer-20180419.PDF (citing Berkheimer v. HP Inc.,
881 F.3d 1360, 1367–68 (Fed. Cir. 2018)).
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claims simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, 84 Fed. Reg. 56.
The claims fail to recite any specific steps of an algorithm, nor does
Appellant cite any Specification disclosure for the required specificity.
We find the limitations are specified at such a high level of generality
consistent with the absence of an inventive concept. Considering the claim
limitations as an ordered combination adds nothing to the abstract idea that
is not already present when the limitations are considered separately. See
Mayo, 566 U.S. at 79. The ordered combination of limitations amounts to
nothing more than certain mental processes implemented with generic
computer components that operate “in a conventional way.” See also Alice,
573 U.S. at 225–26. Therefore, we conclude that none of the claim
limitations, viewed “both individually and as an ordered combination,”
amount to significantly more than the judicial exception in order to
sufficiently transform the nature of the claims into patent-eligible subject
matter.” See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting
Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of Claims 1–3, 7–
14, 16–24 under 35 U.S.C. § 101.

CLAIMS 1–3, 7–10, 17–20, AND 24: OBVIOUSNESS OVER
HELLER, KNIGHT, AND MINERT.
Appellant argues all claims as a group in view of the limitations of
Claim 1 and designate Claim 37 as representative. See Appeal Br. 10, 13.
Therefore, we decide the appeal of the § 103 rejections on the basis of
representative Claim 1 and refer to the rejected claims collectively herein as
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“the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324,
1325 (Fed. Cir. 1986). Appellant does not separately argue, nor does the
Examiner’s Answer make separate findings for any dependent claim. See
Ans.
Appellant contends the art of record, and specifically Heller, fails to
teach:
determines eligibility for the work item to be a training work
item comprising determining the work item is not associated
with a customer that has had a previous work item that was
previously determined to be a previous training work item,
as recited in Claim 1. Appeal Br. 10.
The Examiner finds this limitation:
can read on a new caller with no prior record. Heller teaches
that when call is placed by a caller, a prior history and
associated record of the caller will be determined [citing Heller,
col. 20, ll. 39–55] upon determining the work item is eligible to
be a training work item.
Non-Final Act. 8–9 (citing Heller, col. 10, l. 61–col. 11, l. 11).
Appellant argues that, unlike the claims, Heller teaches “the matching
of a customer, having an estimated time to complete a call, that is more
closely aligned with an agent having a similar estimated time to complete a
call.” Appeal Br. 10 (citing Heller, col. 10, l. 61–col. 11, l. 11) (cited by the
Examiner). Appellant argues although:
a new customer would have no history, and therefore no
knowledge exists as to whether the customer has any prior work
items or how such prior work items were handled, Heller fails
to teach that which is claimed. More specifically, the claimed
determination of whether the work item is associated with a
customer that has had a prior work item designated as a training
work item.
Appeal 2019-004061
Application 14/507,238

19
Appeal Br. 11.
The examiner finds Heller determines the identity and call record of
the caller and teaches that certain callers may be privileged to have a shorter
anticipated wait and greater efficiency service than others. Ans. 15 (citing
Heller, col.14, ll. 44–49). According to the “Examiner’s interpretations,”
calls “associated with privileged callers will not be selected every time to be
a training call to avoid frustrating privileged callers.” Id.
Appellant argues assuming arguendo that Heller teaches callers may
be treated preferentially, the Examiner has failed to demonstrate that a
person of ordinary skill in the art “would read ‘treated preferentially,’ as
teaching . . . determining the work item is not associated with a customer
that has had a previous work item that was previously determined to be a
previous training work item,” as claimed. Reply Br. 3.
We agree with appellant that the Examiner has failed to show that a
person of ordinary skill in the art would equate preferential treatment with
the recited limitation.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 7–14,
16–24
101 Eligibility 1–3, 7–
14, 16–24

1–3, 7–10,
17–20, 24
103 Heller, Knight,
Minert
1–3, 7–10,
17–20, 24
11–14, 16 103 Heller, Minert,
Shaffer
11–14, 16
Appeal 2019-004061
Application 14/507,238

20
20, 21 103 Heller, Knight,
Minert, Nies
20, 21
23 103 Heller, Minert,
Shaffer, Nies
23
Overall 1–3, 7–
14, 16–24

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