Ex Parte Erhart et al

Patent Trial and Appeal Board

Sep 20, 2017

12786215 (P.T.A.B. Sep. 20, 2017)

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.
12/786,215 05/24/2010 George Erhart 4366CSM-107 2354
48500 7590 09/22/2017
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/22/2017 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
pair_Avay a @ firsttofile. com
edocket @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE ERHART, VALENTINE C. MATULA, and
DAVID SKIBA
Appeal 2015-0081091
Application 12/786,215
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 1—20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Avaya Inc. as the real party in interest. App. Br. 2.
Appeal 2015-008109
Application 12/786,215
BACKGROUND
Appellants’ invention is directed to “operating a contact center
configured to conduct social media interactions.” Spec. 11.
Claim 1 is illustrative:
1. A method, comprising:
receiving a work item in a contact center, wherein the
work item represents one or more posts by a user in an associated
social media context;
analyzing, by a processor, the work item, wherein the
analysis is performed before the work item is routed to a contact
center agent;
based on the analysis of the work item, classifying by the
processor the work item as being related to one or more
predetermined work item classifications, wherein the
classification is performed before the work item is routed to the
contact center agent;
accessing a historical data structure comprising records of
historic responses to social media posts and directed work items
comprising media types of at least one of voice, video, text,
images, and audio associated with the one or more predetermined
work item classifications;
identifying historical agent responses that are also related
to the one or more predetermined work item classifications;
presenting the data structure and identified historical agent
responses along with the work item to the contact center agent
such that the contact center agent can leverage the identified
historical agent responses and the historic data structure records
when responding to the work item; and
receiving an input of the contact center agent selecting at
least one of the identified historical agent responses as a template
for a response to the work item.
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THE REJECTIONS
Claims 1—20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Scott et al. (US 2011/0010173 Al, pub. Jan. 13, 2011), Spire et al. (US
2007/0266138 Al, pub. Nov. 15, 2007), Rose et al. (US 2010/0169159 Al,
pub. July 1, 2010), and Goeldi (US 2010/0121849 Al, pub. May 13, 2010).
ISSUES
Did the Examiner err in rejecting claims 1—20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter because the claims are not
directed to an abstract idea and amount to significantly more than an abstract
idea?
Did the Examiner err in rejecting claims 1—20 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Scott, Spire, Rose, and
Geoldi?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response in the Answer to Appellants’
arguments in the Appeal Brief. We disagree with Appellants’ conclusions.
We do not consider arguments that Appellants could have made but chose
not to make in the Briefs, and we deem any such arguments waived.
37C.F.R. §41.37(c)(l)(iv).
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Rejection under 35 U.S.C. §101
We are not persuaded of error on the part of the Examiner in rejecting
claims 1—20 as being directed to patent ineligible subject matter by
Appellants’ argument that claims are not directed to an abstract idea. See
App. Br. 5-10.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are not
patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S.Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“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.”); 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.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
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(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
Regarding the first step of the Alice analysis, The Examiner asserts the
claims are directed to the abstract idea of determining how to respond to a
work item and that the claims do no more than apply the abstract idea. Ans.
2. The Examiner finds the claims are directed to a method of organizing
human activities associated with a business practice, therefore, are directed
to an abstract idea. Ans. 2, 14—15.
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Appellants argue the claims are not directed to an abstract idea
because they are directed to a practical application of an idea that is tangibly
applied to a structure (App. Br. 6—7), specifically, a template selected from
responses to similarly classified work items is presented to a contact center
agent (Reply Br. 3).
In our view, the claims are directed to the abstract idea of improving
customer service by referring to previous relevant work item responses (see,
e.g., claim 1 and Spec. 1 5), and, thus, we agree with the Examiner that the
claims are directed to the abstract idea of organizing human activities
associated with a business practice.
A template that is selected from responses to similarly classified work
items being presented to a contact center agent may provide the claimed
method with a practical application, but that is not enough to transform the
abstract idea recited in claim 1 into a patent-eligible inventive concept. Cf,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.
2011) (“The Court [Parker v. Flock, 437 U.S. 584 (1978)] rejected the
notion that the recitation of a practical application for the calculation could
alone make the invention patentable.”).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claimed invention recites patent-eligible
subject matter because it does not preempt the idea of classifying work
items. App. Br. 7—8.
“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—
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1363 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[T]hatthe
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). And, “[w]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
Turning to the second step of the Alice analysis, because we determine
that independent claim 1 is directed to an abstract idea, the claim must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claimed invention amounts to significantly
more than an abstract idea. App. Br. 8—10. We agree with the Examiner
that:
[T]he abstract idea is merely acted upon by some unspecified,
generic computer, which is not an improvement in another
technology or technical field. The claims do not present
improved operations of the computer related to more efficiently
processing data, for example. Filtering out data of interest does
not improve the actual operations of the computer; it is also a
conventional, well-understood computer function. At best, the
asserted improvement would be an improvement to the
underlying business process, i.e., the abstract idea of organizing
human activities. Communicating information to a human (e.g.,
related to work items) is an example of organizing human
activities. There are no actual improvements to another
technology or technical field, no improvements to the
functioning of the computer itself, and there are no meaningful
limitations beyond generally linking the use of the abstract idea
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to a particular technological environment evident in the claims.
The claims require no more than a generic computer to perform
generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.
Ans. 15—16.
Appellants’ reliance on DDR Holdings LLVv. Hotels.com, 773 F.3d
1245 (Fed. Cir. 2014) is inapposite. See Reply Br. 3. In DDR Holdings, the
Federal Circuit found that the software patent claims address the problem of
retaining website visitors. Id. at 1257. In applying Alice Corp., the Federal
Circuit found that the claims were not directed towards an abstract idea
because the claimed invention was necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks. Id. In other words, the problem of a host website
losing a visitor is a problem that specifically “arose in the realm of computer
networks.” Moreover, the solution of solving the lost visitor problem was
“necessarily rooted in computer technology.” The claimed invention in
DDR Holdings did not merely use the internet but rather changed how
interactions on the internet operated.
We do not agree with Appellants that the appealed claims solve a
technological problem that specifically arises in the realm of computer
networks. Reply Br, 3. The instant application is instead directed to the
business problem of improved customer service by referring to past work
item responses. Spec. ®[ 5. The solution to this business problem, by
monitoring, tracking, analyzing, and utilizing past agent responses to build
suggestions for future agent responses, is done through the routine and
conventional activity of a server computing device. Appellants do not
disclose that the computing device is changed in any way or that a special
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computing device is used to cany out the steps of the invention. Rather,
Appellants own disclosure at % 78 states that the server computing devices
can he:
one or more general purpose computers capable of executing
programs or scripts in response to the user computers 505, 510
and 515. . . . The application server(s) 530 may also include
database servers, including without limitation those
commercially available from Oracle, Microsoft, Sybase, IBM
and the like, which can process requests from database clients
running on a user computer 505.
Clearly, any general purpose computer could perform the limitations
of the claims.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1—20 under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 103(a)
Initially, we note that Appellants argue independent claims 1,11, and
16 together as a group. App. Br. 11. We select claim 1 as representative.
See 37 C.F.R. § 41.37(c)(l)(iv). No separate argument is advanced for
dependent claims 2—10, 12—15, and 17—20. App. Br. 14—15. Thus, claims
2—20 stand or fall with claim 1 regarding the § 103(a) rejection.
We are not persuaded by Appellants’ arguments that the Examiner
erred in asserting the combination of Scott, Spire, Rose, and Geoldi renders
obvious the subject matter of claim 1. App. Br. 11—15; Reply Br. 4—6.
Specifically, Appellants contend the combination of Scott, Spire, Rose, and
Geoldi does not teach “accessing a historical data structure comprising
records of historic responses to social media posts and directed work
items . . . associated with the one or more predetermined work item
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classifications.” App. Br. 13. Appellants argue Scott teaches an agent
selecting between scripts and Spire teaches resolving technical issues, but
neither reference teaches the claimed “historic responses to social media
posts and directed work items.” App. Br. 13; Reply Br. 4, 6. Appellants
further contend Rose determines the sentiment of social media
communication and Goeldi teaches analyzing social media posts to identify
problems, but neither reference teaches “historic responses to social media
posts and directed work items.” App. Br. 12—14; Reply Br. 4—5.
Appellants’ arguments are misplaced, as the Examiner does not rely
on Scott, Spire, Rose, or Geoldi alone to teach “historic responses to social
media posts and directed work items,” but rather a combination of the
references. Ans. 3—9. Nonobviousness cannot be established by attacking
the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
In this instant case, the Examiner relies on Scott to teach the concept
of presenting a scripts as responses for contact center agents, where
historical information is used to refine the script. Ans. 4, 18 (citing Scott
11 101-102, 106; see also H 98: the system classifies a caller’s topic and
selects a script for the agent to read). Similarly, the Examiner finds Spire
teaches uses historical incident cause and remediation information to more
effectively identify solutions to similar problems in the future. Ans. 5, lb-
17 (citing Spire 1 57). Thus, Scott and Spire were relied upon for the
concept of an agent using historical responses to previous issues to resolve a
current work item. The Examiner relies on Rose (Ans. 4—5 (citing Rose
1121 and 41)) and Goeldi (Ans. 8—9 (citing Goeldi 148; see also Goeldi
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1107) for the concept of a contact center work item being generated from a
social media post.
We note that a person of ordinary skill is a person of ordinary
creativity, not an automaton. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
421 (2007). The analysis under § 103(a) presumes not only common sense,
but also skill in the art. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985).
Therefore, in view of the above cited teachings, we agree with the Examiner
that one of ordinary skill in the art would recognize the ability to combine a
social media customer service system, per Rose and Goeldi, with a database
of historical responses and historical scripts used help an agent address the
problem, per Scott and Spire, for the purpose of monitoring and identifying
potential customer or publicity issues access multiple media. Ans. 5. Thus,
we agree with the Examiner that the combination of Scott, Spire, Rose, and
Goeldi teaches the claimed “historical data structure comprising historic
responses to social media posts and directed work items.”
Appellants further contend that the combination of Scott, Spire, Rose,
and Goeldi does not teach “receiving an input of the contact center agent
selecting at least one of the identified historical agent responses as a
template for a response to the work item.” App. Br. 14. Appellants again
attack Scott and Spire individually (App. Br. 14), and for the reasons stated
above, we agree the combination of references teaches the claimed
“identified historical agent responses.” Scott further teaches a contact agent
selecting a script as a template for a response to the work item (Ans. 6
(citing Scott || 90, 101)), thus, we agree with the Examiner’s finding that
the combination of references teaches the disputed limitation.
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In view of the foregoing, we sustain the Examiner’s rejection of claim
1 under 35 U.S.C. § 103(a). We also sustain the rejection as it is directed to
remaining claims 2—20 because, as we stated above, these claims stand or
fall with claim 1.
DECISION
We affirm the rejection of claims 1—20 under 35 U.S.C. § 101.
We affirm the rejection of claims 1—20 under 35 U.S.C. § 103(a).
TIME PERIOD
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) (2009).
AFFIRMED
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