Avaya Inc.

Patent Trials and Appeals Board

Mar 16, 2022

2021003301 (P.T.A.B. Mar. 16, 2022)

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. 14/245,855 04/04/2014 Shmuel Shaffer 4366-652 1776 48500 7590 03/16/2022 SHERIDAN ROSS P.C. 1560 BROADWAY, SUITE 1200 DENVER, CO 80202 EXAMINER DICKERSON, TIPHANY B ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 03/16/2022 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 SHMUEL SHAFFER and JAMES HICKEY ____________ Appeal 2021-003301 Application 14/245,855 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and BRADLEY B. BAYAT, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed October 14, 2020) and Reply Brief (“Reply Br.,” mailed April 26, 2021), and the Examiner’s Answer (“Ans.,” mailed February 26, 2021) and Non-Final Office Action (“Non-Final Act.,” mailed July 14, 2020). Appellant identifies Avaya Inc. as the real party in interest (Appeal Br. 2). Appeal 2021-003301 Application 14/245,855 2 CLAIMED INVENTION The Specification states, “[t]he systems and methods disclosed herein relate to the generation of customer surveys and in particular to the generation of customer surveys based on monitoring content of a communication session” (Spec. ¶ 1). Claims 1, 12, and 20 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. A method comprising: [(a)] monitoring, with a processor, content of a first communication session between a first communication endpoint of a first user and a second communication endpoint of a second user to identify a first topic in the content of the first communication session; [(b)] generating, with the processor, a first survey that includes a dynamically-generated question based on the identified first topic; and [(c)] presenting or sending, with the processor, the first survey to the first user of the first communication endpoint after the first communication session is completed. REJECTIONS2 Claims 1-20 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Claim 13 is rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter that the inventors regard as the invention. Claims 1-7, 9, 11-14, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Freedman et al. (US 2011/0206198 A1, published Aug. 25, 2 The Examiner has withdrawn the rejections of claims 15-17 under 35 U.S.C. § 103 (Ans. 3). Appeal 2021-003301 Application 14/245,855 3 2011) (“Freedman”) and Jeffs et al. (US 2014/0143157 A1, published May 22, 2014) (“Jeffs”). Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Freedman, Jeffs, and Ganesh et al. (US 2014/0337098 A1, published Nov. 13, 2014) (“Ganesh”). Claims 10, 18, and 19 are rejected under 35 U.S.C. § 103 as unpatentable over Freedman, Jeffs, and Brandt et al. (US 8,634,534 B1, issued Jan. 21, 2014) (“Brandt”). ANALYSIS Written Description Section 112(a) of the patent statute reads, in part, “[t]he specification shall contain a written description of the invention.” 35 U.S.C. § 112(a). The purpose of this written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353-54 (Fed. Cir. 2010) (citation omitted). The requirement, thus, “ensures that the public receives a meaningful disclosure in exchange for being excluded from practicing an invention for a period of time.” Id. To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail such that one skilled in the art can reasonably conclude that the inventor had possession of the claimed subject matter at the time the application was filed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991). In particular, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id.; see Appeal 2021-003301 Application 14/245,855 4 also Ariad, 598 F.3d at 1351; Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112, 84 Fed. Reg. 57, 61-62 (Jan. 7, 2019) (the “2019 § 112 Guidelines”). The written description requirement does not demand any particular form of disclosure; however,” a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citation omitted). Identify a First Topic in the Content of the First Communication Session In rejecting claims 1-20 under 35 U.S.C. § 112(a), the Examiner first noted that independent claim 1 recites “monitoring. . . content of a first communication session between a first communication endpoint of a first user and a second communication endpoint of a second user to identify a first topic in the content of the first communication session,” and that independent claims 12 and 20, respectively, “recite a content monitor with similar functionality, and a process in [a] contact center for monitoring content” (Non-Final Act. 3-4). The Examiner then determined that the claims are properly rejected as failing to comply with the written description requirement because, although the Specification describes generic content monitoring software and that the content monitor “can be or may include any hardware/software that can monitor content of a communication session,” the Specification does not describe “how to identify a first topic in the content of the first communication session, as claimed” (id. at 4; see also id. at 5 (“Here, the specification is silent as to how the inventor has chosen to identify topics in the communications session. Accordingly, the written description does not convey that the inventor had possession of the claimed invention.”)). Appellant argues that the rejection is improper, and that sufficient written description support may be found in “the Specification as originally-filed at the Abstract, Summary, and Figures 2-7 together with their associated text,” including Appeal 2021-003301 Application 14/245,855 5 paragraphs 18, 22, 23, 25, 28-31, 33, 36, 39, 40, 41, 44, 46, 47, 49, 51, 59, and 61 (Appeal Br. 8-10). Appellant observes that the Specification describes in paragraph 23 that “[t]he content monitor 122 can be or may include any hardware/software that can monitor content of a communication session” and can monitor in real time, content of communication sessions, such as content in a video communication session and content in a voice communication session; Appellant also notes that the Specification describes, in paragraph 28, that content monitor 122 can monitor the communication session by looking for specific words, phrases, gestures, punctuation, key presses, abbreviations, and/or the like to identify topics, and can monitor content in various types of media, such as voice media or video media (id. at 10). Appellant asserts that “a person of ordinary skill in the art would properly understand and appreciate the claimed limitations with respect to their structure, material, and/or steps because the Specification properly describes the structure, material, and/or steps” (Appeal Br. 10). We, however, agree with the Examiner that the Specification merely describes what the content monitor does without describing how it performs the claimed function, i.e., identifying topics in the content of the communication session (Ans. 4). Although the Specification describes that the content monitor “can be or may include any hardware/software that can monitor content of a communication session,” there also is no evidence of record here that “a basic content monitoring device . . . automatically output[s] topics” (id. at 5). We are not persuaded that the Specification provides sufficient evidence that the inventors were in possession of the claimed functionality at the time the present application was filed. See Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 683 (Fed. Cir. 2015) (“The more telling question is whether the Appeal 2021-003301 Application 14/245,855 6 specification shows possession by the inventor of how [the claimed function] is achieved.”); see also 2019 § 112 Guidelines, 84 Fed. Reg. at 62. As such, we agree with the Examiner that Appellant has not demonstrated that the Specification provides the requisite written description support. Therefore, we sustain the Examiner’s rejection of claims 1-20 under 35 U.S.C. § 112(a) on this basis. Generating a Survey Including a Dynamically Generated Question The Examiner additionally rejected claims 1-20 under 35 U.S.C. § 112(a) on the ground that the Specification fails to provide adequate written description support for “generating, with the processor, a first survey that includes a dynamically-generated question based on the identified first topic,” as recited in independent claim 1, and similarly recited in independent claims 12 and 20 (Non- Final Act. 5-6). The Examiner found that the Specification is “silent as to how the inventor[s] [have] chosen to generate dynamically-generated questions,” and that the written disclosure “does not indicate that the inventors had possession of the details of particular software or instructions that would implement the survey generation” (id.). Appellant notes that the Specification describes that “survey generator 123 can be or may include any hardware/software that can create, modify, and/or generate a survey”; and, citing paragraphs 24 and 38, Appellant argues that “a person of ordinary skill in the art would understand and appreciate that the limitation ‘generating . . . a first survey that includes a dynamically-generated question based on the identified first topic,’ has proper written description [support]” (Appeal Br. 10-11).3 We disagree. Although the Specification 3 Appellant asserts that support for this limitation can also be found “at the Abstract; Summary; Figs. 2-7; and paragraphs [0029], [0030], [0034], [0038], [0040], [0042]-[0059] and [0061]” (Appeal Br. 11). Appeal 2021-003301 Application 14/245,855 7 describes, for example in paragraphs 24 and 29-34, that the survey generator generates a survey that includes questions based on topics discussed in a communication session, the Specification merely describes “the intended results of generating the survey”; it does not describe “the manner with which the process is to be achieved” (Ans. 6). Accordingly, we sustain the Examiner’s rejection of claims 1-20 under 35 U.S.C. § 112(a) on this additional basis. Dynamically-generated Question Not Selected from Previously Drafted Question Claim 3 depends from claim 1 and recites that “the dynamically-generated question is generated to contain words and a topic identified by the monitoring, and . . . is not selected from a previously drafted question.” The Examiner rejected claim 3 under 35 U.S.C. § 112(a) as new matter, finding that the claimed language lacks support in the original disclosure (Non- Final Act. 6). We, however, agree with Appellant that the requisite written description support can be found at least in paragraphs 28-30 of the Specification, as originally filed (Appeal Br. 12). There, the Specification discloses that the content of a communication session is monitored to identify topics, and that a survey generator generates a survey by incorporating the one or more topics into the survey (see Spec. ¶¶ 28-29). The Specification, thus, describes that a survey can be generated that contains the following questions: 1) Were you upset that product X was out of stock? 2) Are you satisfied with the purchase of product Yin place of product X? 3) How would you rate your overall experience? (id. ¶ 30). And distinguishing questions 1 and 2 from question 3, the Specification explains that, in this example, “questions 1 and 2 were generated dynamically Appeal 2021-003301 Application 14/245,855 8 based on topics that were discussed in the communication session” whereas “[q]uestion 3 is a generic predefined question that is not based on a topic that occurred in the communication session” (id.). We are persuaded that the Examiner, in this instance, erred in rejecting claim 3 under 35 U.S.C. § 112(a). Therefore, we do not sustain the Examiner’s rejection of claim 3 on this basis. Indefiniteness Claim 13 depends from independent claim 12, and recites that “the content monitor [recited in claim 12], when executed by the first processor, monitors content of a second communication session to identify a second topic,” and that “the survey generator [in claim 12], when executed by the second processor, determines whether to incorporate the second topic into the first survey based on a comparison between the first topic and the second topic.” In rejecting claim 13 as indefinite, the Examiner observed that although the claim “requires incorporating the second topic based on a comparison,” the claim “provides no information how” the comparison is determined (Non-Final Act. 7). Citing paragraph 35, the Examiner notes, “the specification states, ‘This can be based on the content of the first and second communication session being similar’” (id.). And the Examiner takes the position that claim 13 is properly rejected under 35 U.S.C. § 112(b) as indefinite because “[t]he specification does not provide a standard for ascertaining the requisite degree of what constitutes similarity in this case, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention” (id.). We are persuaded that the Examiner erred in rejecting claim 13 as indefinite at least because claim 13 does not recite a term of degree, i.e., similarity; instead, claim 13 recites that the survey generator determines whether to incorporate a Appeal 2021-003301 Application 14/245,855 9 second topic into a first survey based on “a comparison between the first topic and the second topic.” And, we agree with Appellant that a person of ordinary skill in the art would reasonably understand, when claim 13 is read in light of the Specification, what constitutes a comparison (Appeal Br. 13-14). The Specification discloses that “[a] topic can be any type of topic that can be uniquely identified” and describes, for example, that “[a first] topic could be that a user wanted to purchase product X, but that product X was out of stock” and “[a] second topic could be that an agent recommended product Y as a replacement for product X, which the user purchased” (Spec. ¶ 28). The Specification also discloses an example where a user at a communication endpoint 101B initiates a second video session with an agent at a communication endpoint 101E, and describes that, in one embodiment, the topics that are identified in the second communication session are incorporated into the survey (id. ¶ 35). The Specification explains, “[t]his can be based on the content of the first and second communication session being similar. Alternatively, if the content is different, a second survey may be generated and presented or sent to the user” (id. ¶ 35). In other words, the second topic is incorporated into the first survey based on a comparison between the topics identified in the first communication session and the topics identified in the second communication session, i.e., a comparison between the first topic and the second topic. We are persuaded that a person skilled in the art would reasonably understand what is claimed when the claim 13 is read in light of the Specification. Therefore, we do not sustain the Examiner’s rejection of claim 13 under 35 U.S.C. § 112(b). See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second Appeal 2021-003301 Application 14/245,855 10 paragraph, now § 112(b), is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.”). Obviousness We begin our obviousness analysis by first considering the scope and meaning of the phrase “a dynamically generated question,” as recited in independent claims 1, 12, and 20. And we find that a person of ordinary skill in the art would reasonably understand from the Specification, including at least paragraphs 28-30, that “a dynamically-generated question” is generated “on the fly,” e.g., based on the monitored content of a communication session, and does not depend for its formulation on previously drafted questions or on pre-defined and/or pre-existing data structures. Independent Claims 1, 12, and 20 and Dependent Claims 2-7, 9, 11, 13, and 14 We are persuaded by Appellant’s argument that the Examiner erred in rejecting independent claims 1, 12, and 20 under 35 U.S.C. § 103 because Jeffs, on which the Examiner relies, fails to disclose or suggest “generating . . . a first survey that includes a dynamically-generated question based on the identified first topic,” i.e., step (b), as recited in claim 1, and similarly recited in claims 12 and 20 (Appeal Br. 14-18).4 4 The Examiner ostensibly concedes that Freedman does not disclose or suggest generating a survey that includes a “dynamically generated” question (see Ans. 8 (“Initially, regarding claim interpretation of this limitation, the function occurring is generating a survey, where the result achieved contains a question containing/related to the identified topic. The fact that the question was dynamically generated, is given little patentable weight, because the process of dynamically-generating questions is not claimed. . . . . After exchanges about this interpretation and Freedman led to an impasse, Jeffs was cited as additional evidence teaching the narrower construction, in order to advance prosecution.”). Appeal 2021-003301 Application 14/245,855 11 Jeffs discloses a method for creating and delivering customer feedback surveys, and discloses that customer interaction content is analyzed to identify content, themes, and/or customer sentiments in the interaction content (Jeffs ¶¶ 12, 13). In exemplary embodiments, text analytics are used to identify the specific issues driving the customer interaction, e.g., product warranties or returns, product help or questions, inquiries regarding competitive products or services, increases in service, decreases in service, or cancellation of service; these issues are then used to construct one or more customer surveys tailored to the identified specific issues (id. ¶ 13). Jeffs describes that these surveys may be constructed in a variety of ways, including selection of a survey from a plurality of previously created surveys (id.). Alternatively, the surveys may be constructed using “pre-defined question structures” (id. ¶ 15). Jeffs, thus, discloses that if, for example, the customer identifies a specific device, or a specific complaint regarding a device, a question structure asking generally about a device could be modified to identify the specific device identified by the customer; alternatively, a generalized product quality question could be modified to ask about the customer’s specific product quality concern (id.). Jeffs further describes the use of pre-formed surveys in paragraph 29. And in paragraph 30, Jeffs describes that a survey decision engine can select questions from a set of stored survey questions that can be modified/tailored to create a customized survey. In rejecting claim 1 under 35 U.S.C. § 103, the Examiner ostensibly relied on Jeffs’s use of “pre-defined question structures” as disclosing the argued limitation (see Final Act. 9). We, however, agree with Appellant that a person of ordinary skill in the art would not reasonably equate a survey question, created by modifying/customizing a “pre-defined question structure,” as Jeffs discloses, to “a Appeal 2021-003301 Application 14/245,855 12 dynamically-generated question based on the identified first topic,” as called for in claim 1, and similarly called for in claims 12 and 20 (Appeal Br. 16-17). Therefore, we do not sustain the Examiner’s rejection of independent claims 1, 12, and 20 under 35 U.S.C. 103. For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 2-7, 9, 11, 13, and 14. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonobvious”). Dependent Claims 8, 10, 18, and 19 Claims 8 and 10 and claim 18 and 19 depend from independent claims 1 and 12, respectively. The rejections of these dependent claims do not cure the deficiency in the Examiner’s rejection of independent claims 1 and 12. Therefore, we do not sustain the Examiner’s rejections of dependent claims 8, 10, 18, and 19 for the same reasons set forth above with respect to the independent claims. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-20 112(a) Written Description 1-20 13 112(b) Indefiniteness 13 1-7, 9, 11- 14, 20 103 Freedman, Jeffs 1-7, 9, 11- 14, 20 8 103 Freedman, Jeffs, Ganesh 8 10, 18, 19 103 Freedman, Jeffs, Brandt 10, 18, 19 Appeal 2021-003301 Application 14/245,855 13 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome 1-20 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